Patent Cooperation Treaty 1801 Basic Patent Cooperation Treaty (PCT) Principles 1802 PCT Definitions 1803 Reservations Under the PCT Taken by the United States of America 1805 Where to File an International Application 1807 Agent or Common Representative and, General Power of Attorney 1808 Change in or Revocation of the Appointment of an Agent or a Common Representative 1810 Filing Date Requirements 1812 Elements of the International Application 1817 PCT Member States 1817.01 Designation of States and Precautionary Designations 1817.02 Continuation or Continuation-in -Part Indication in the Request 1819 Earlier International or International-Type Search 1820 Signature of Applicant 1821 The Request 1823 The Description 1823.01 Reference to Deposited Biological Material 1823.02 Nucleotide and/or Amino Acid Sequence Listings 1824 The Claims 1825 The Drawings 1826 The Abstract 1827 Fees 1828 Priority Claim and Document 1830 International Application Transmittal Letter 1832 License Request for Foreign Filing Under the PCT 1834 Correspondence 1834.01 Use of Telegraph, Teleprinter, Facsimile Machine 1834.02 Irregularities in the Mail Service 1836 Rectification of Obvious Errors 1840 The International Searching Authority 1840.01 The European Patent Office as an International Searching Authority 1842 Chapter I Basic Flow 1843 The International Search 1844 The International Search Report 1844.01 Time for the International Search Report 1846 Sections of the Articles, Regulations, and Administrative Instructions Under the PCT Relevant to the International Search 1847 Refund of International Search Fee 1848 Sequence Listings 1849 Subject Matter Excluded From International Search 1850 Unity of Invention Before the International Searching Authority 1851 Identification of Patent Documents 1852 International-Type Search 1853 Amendment Under PCT Article 1857 International Publication 1859 Withdrawal of International Application or Designations 1860 International Preliminary Examination 1861 Chapter II Basic Flow 1862 Agreement with the International Bureau To Serve as an International Preliminary Examination Authority 1864 The Demand and Preparation for Filing of Demand 1864.01 Amendments Filed with Demand 1864.02 Applicant's Right to File a Demand 1864.03 States Which May Be Elected 1864.04 Agent's Right to Act 1865 Filing of Demand 1866 Filling in of Headings on Chapter II Forms 1867 Preliminary Examination Fees 1868 Correction of Defects in the Demand 1869 Notification to International Bureau of Demand 1870 Priority Document and Translation Thereof 1871 Processing Amendments Filed Under Article 19 and Article 34 Prior to or at the Start of International Preliminary Examination 1872 Transmittal of Demand to the Examining Corps 1873 Later Election of States 1874 Determination if International Preliminary Examination Is Required and Possible 1875 Unity of Invention Before the International Preliminary Examining Authority 1875.01 Preparation of Invitation Concerning Unity 1875.02 Reply to Invitation Concerning Lack of Unity of Invention 1876 Notation of Errors and Informalities by the Examiner 1876.01 Request for Rectification and Notification of Action Thereon 1877 Nucleotide and/or Amino Acid Sequence Listings During the International Preliminary Examination 1878 Preparation of the Written Opinion 1878.01(a) Prior Art Under Chapter II 1878.01(a)(1) Novelty Under Chapter II 1878.01(a)(2) Inventive Step Under Chapter II 1878.01(a)(3) Industrial Applicability Under Chapter II 1878.02 Reply to the Written Opinion 1879 Preparation of the International Preliminary Examination Report 1879.01 Time Limit for Preparing Report 1879.02 Transmittal of the International Preliminary Examination Report 1879.03 Translations 1879.04 Confidential Nature of the Report 1880 Withdrawal of Demand or Election 1881 Receipt of Notice of Election by the Patent and Trademark Office 1890 Receipt of Notice of Designation 1891 Receipt of Notice of Election and Preliminary Examination Report 1893 National Stage (U.S. National Application Filed Under 35 U.S.C. 371) 1893.01 Commencement and Entry 1893.01(a) Entry via the U.S. Designated Office 1893.01(a)(1) Submissions Required by Months From the Priority Date 1893.01(a)(2) Article 19 Amendment (Filed With the International Bureau) 1893.01(b) Entry via the U.S. Elected Office 1893.01(b)(1) Submissions Required by Months From the Priority Date 1893.01(b)(2) Article 19 and Article 34 Amendments (Filed With the International Preliminary Examining Authority) 1893.01(c) Fees 1893.01(d) Translation 1893.01(e) Oath/Declaration 1893.02 Abandonment 1893.03 Prosecution of U.S. National Stage Applications Before the Examiner 1893.03(a) How To Identify That an Application Is a U.S. National Stage Application 1893.03(b) The Filing Date of a U.S. National Stage Application 1893.03(c) The Priority Date, Priority Claim, and Priority Papers for a U.S. National Stage Application 1893.03(d) Unity of Invention 1893.03(e) Papers Received From the International Bureau and Placed in a U.S. National Stage Application File 1893.03(f) Drawings and PCT Rule 11 1893.03(g) Information Disclosure Statement in a National Stage Application 1895 A Continuation or Continuation-In- Part Application of a PCT Application Designating the United States 1895.01 Handling of and Considerations In the Handling of National Applica tions Under 35 U.S.C. 371 and 35 U.S.C. 111(a) Continuations and Continuations-In-Part of a PCT Application 1896 The Differences Between a National Application Filed Under 35 U.S.C. 111(a) and a National Stage Applica tion Filed Under 35 U.S.C. 371 INTRODUCTION This chapter is designed to be a guide for patent examin- ers in searching and examining applications filed under the Patent Cooperation Treaty (PCT). Applicants desiring addi- tional information for filing international applications should obtain a copy of the PCT Applicant's Guide from the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. The Articles and Regulations under the PCT are repro- duced in Annex T of this Manual and the Administrative Instructions are reproduced in Annex AI. PCT applications are processed by the International Application Processing Division within the U.S. Patent and Trademark Office. 1801 Basic Patent Cooperation Treaty (PCT) Principles MAJOR CONCEPTS OF THE PCT The Patent Cooperation Treaty (PCT) enables the U.S. applicant to file one application, "an international applica- tion", in a standardized format in English in the U.S. Receiving Office (the U.S. Patent and Trademark Office), and have that application acknowledged as a regular national filing in as many member countries to the PCT as the applicant "designates" or "elects," that is, names, as countries in which patent protection is desired. In the same manner, the PCT enables foreign applicants to file a PCT international application, designating the United States of America, in their home language in their home patent office and have the application acknowledged as a regular U.S. national filing. The PCT also provides for a search and publication after 18 months from the priority date. Upon payment of national fees and the furnishing of any required translation, usually 20 months after the filing of any prior- ity application for the invention, or the international filing date if no priority is claimed, the application will be sub- jected to national procedures for granting of patents in each of the designated countries. If a demand for an international preliminary examination is filed within 19 months from the priority date, the period for entering the national stage is extended to 30 months from the priority date. The PCT offers an alternative route to filing patent appli- cations directly in the patent offices of those countries which are members of the PCT. It does not preclude taking advantage of the priority rights and other advantages pro- vided under the Paris Convention. The PCT provides an additional and optional foreign filing route to patent appli- cants. The filing, search and publication procedures are pro- vided for in Chapter I of the PCT. Additional procedures for a preliminary examination of PCT international applica- tions are provided for in optional PCT Chapter II. In most instances a national U.S. application (NA) is filed first. An international application for the same subject matter will then be filed subsequently within the priority year provided by the Paris Convention and the priority ben- efit of the U.S. national application filing date will be claimed. RECEIVING OFFICE (RO) The international application (IA) must be filed in a receiving Office (RO)(PCT Article 10). The United States Patent and Trademark Office will act as a receiving Office for United States residents and nationals (35 U.S.C. 361(a)). Under PCT Rule 19.1(a)(iii), the International Bureau of the World Intellectual Property Organization will also act as a Receiving Office for U.S. residents and nation- als. The receiving Office functions as the filing and formal- ities review organization for international applications. International applications must contain upon filing the des- ignation of at least one country in which patent protection is desired and must meet certain standards for completeness and formality (PCT Articles 11(1) and 14(1)). Where a priority claim is made, the date of the earlier filed national application is used as the date for determining the timing of international processing, including the various transmittals, the payment of certain international and national fees, and publication of the application. Where no priority claim is made, the international filing date will be considered to be the "priority date" for timing purposes (PCT Article 2(xi)). The international application is subject to the payment of certain fees upon filing, or within 1 month thereafter, and at the expiration of 12 months from the priority date or within 1 month thereafter. The receiving Office will grant an inter- national filing date to the application, collect fees, handle informalities by direct communication with the applicant, and monitor all corrections (35 U.S.C. 361(d)). By 13 months from the priority date, the receiving Office should prepare and transmit a copy of the international application, called the search copy (SC), to the International Searching Authority (ISA); and forward the original, called the record copy (RC), to the International Bureau (IB) (PCT Rules 22.1 and 23). A second copy of the international applica- tion, the home copy (HC), remains in the receiving Office (PCT Article 12(1)). Once the receiving Office has trans- mitted copies of the application, the International Searching Authority becomes the focus of international processing. INTERNATIONAL SERACHING AUTHORITY (ISA) The basic function of the International Searching Authority (ISA) is to conduct a prior art search of inven- tions claimed in international applications; it does this by searching in at least the minimum documentation defined by the Treaty (PCT Articles 15 and 16 and PCT Rule 34). At the option of the applicant, either the U.S. Patent and Trademark Office or the European Patent Office will act as an International Searching Authority for international applications filed in the United States Receiving Office. The International Searching Authority is also responsible for checking the content of the title and abstract (PCT Rules 37.2 and 38.2). An international search report (SR) will normally be issued by the International Searching Authority within 3 months from the receipt of the search copy (usually about 16 months after the priority date)(PCT Rule 42). Copies of the International Search Report and prior art cited will be sent to the applicant by the ISA/US (PCT Rules 43 and 44.1). The search report will contain a listing of documents found to be relevant and will identify the claims in the application to which they are pertinent. However, no judgments or statements as to patentability will be made (PCT Rule 43.9). Once the international search report has been completed and transmitted, interna- tional processing continues before the International Bureau. INTERNATIONAL BUREAU (IB) The basic functions of the International Bureau (IB) are to maintain the master file of all international applications and to act as the publisher and central coordinating body under the Treaty. The World Intellectual Property Organi- zation (WIPO) in Geneva, Switzerland performs the duties of the International Bureau. If the applicant has not filed a certified copy of the prior- ity document in the receiving Office with the international application, or requested upon filing that the receiving Office prepare and transmit to the International Bureau a copy of the prior U.S. national application, the priority of which is claimed, the applicant must submit such a docu- ment directly to the International Bureau or the receiving Office not later than 16 months after the priority date (PCT Rule 17). The Request form contains a box which can be checked requesting that the receiving Office prepare the certified copy. This is only possible, of course, if the receiv- ing Office is a part of the same national Office where the priority application was filed. The applicant has normally 2 months from the date of transmittal of the International Search Report to amend the claims by filing an amendment directly with the Interna- tional Bureau (PCT Article 19 and PCT Rule 46). The International Bureau will then normally publish the interna- tional application along with the search report and any amended claims (Amdt) at the expiration of 18 months from the priority date (PCT Article 21).The international publication is in pamphlet form with a front page contain- ing bibliographical data, the abstract, and a figure of the drawing (PCT Rule 48). The pamphlet also contains the search report and any amendments to the claims submitted by the applicant. If the application is published in a lan- guage other than English, the search report and abstract are also published in English. The International Bureau pub- lishes a PCT Gazette in the French and English languages which contains information similar to that on the front pages of published international applications, as well as various indexes and announcements (PCT Rule 86). The International Bureau also transmits copies of the interna- tional application to all the designated Offices (PCT Article 20 and PCT Rule 47). DESIGNATED OFFICE (DO) and ELECTED OFFICE (EO) The designated Office is the national Office (for exam- ple, the USPTO) acting for the state or region designated under Chapter I. Similarly, the elected Office is the national Office acting for the state or region elected under Chapter II. If no "Demand" for international preliminary examina- tion has been filed within 19 months of the priority date, the applicant must complete the requirements for entering the national stage within 20 months from the priority date of the international application, unless the individual desig- nated Office grants additional time. The applicant also has the right to amend the application within 1 month from the fulfillment of the requirements under PCT Article 22. After this month has expired (PCT Article 28 and PCT Rule 52), each designated Office will make its own determination as to the patentability of the application based upon its own specific national or regional laws (PCT Article 27(5)). If the applicant desires to obtain the benefit of delaying the entry into the national stage until 30 months from the priority date, a Demand for international preliminary exam- ination must be filed with an appropriate International Pre- liminary Examining Authority within 19 months of the priority date. Those states in which the Chapter II proce- dure is desired must be "elected" in the Demand. The original Demand is forwarded to the International Bureau by the International Preliminary Examining Authority. The International Bureau then notifies the vari- ous elected Offices that the applicant has entered Chapter II and that the application should not be considered with- drawn for failure to enter the national stage within 20 months from the priority date. The examiner of the International Preliminary Examin- ing Authority may comment on lack of unity of invention, note errors, and issue a written "opinion" as to whether each claim is "novel", involves "inventive step", and is "industrially applicable." If a written "opinion" is issued by the examiner, the applicant may reply to the opinion by arguments and amendments within the time period set for reply. The examiner will then issue the international pre- liminary examination report which presents the examiner's final position as to whether each claim is "novel", involves "inventive step", and is "industrially applicable" by 28 months from the priority date. A copy of the international preliminary examination report is sent to the applicant and to the International Bureau. The International Bureau then communicates a copy of the international preliminary examination report to each elected Office. The applicant must complete the requirements for enter- ing the national stage by the expiration of 30 months from the priority date to avoid any question of withdrawal of the application as to that elected Office. 1802 PCT Definitions The PCT contains definitions in PCT Article 2 and in PCT Rule 2, which are found in MPEP Annex T. Addi- tional definitions are found in 35 U.S.C. 351, MPEP Annex L, 37 CFR 1.401, MPEP Annex R, Section 101 of the PCT Administrative Instructions and MPEP Annex AI. 1803 Reservations Under the PCT Taken by the United States of America [R-1] The United States of America had originally declared that it was not bound by Chapter II (PCT Article 64 (1)), but withdrew that reservation on July 1, 1987. It has also declared that, as far as the United States of America is concerned, international publication is not required (PCT Article 64 (3)). The United States of Amer- ica also made a reservation under PCT Article 64(4) which relates to the prior art effective date of a U.S. patent issuing from an international application. See 35 U.S.C. 102(e) and 363. These reservations are still in effect. >The U.S. Receiving Office continues to accept applica- tions only in English. See 35 U.S.C. 361(c). PCT Rules 20.4(c), 26.3ter(a) and 26.3ter(c) permit an international filing date be accorded even though portions of an interna- tional application are in a language not acceptable to the Receiving Office. PCT Rules 20.4(c), 26.3ter(a) and 26.3ter(c) are not compatible with the national law applied by the United States Patent and Trademark Office (USPTO) as Receiving Office. Thus, the USPTO has taken a reserva- tion on adherence to these Rules pursuant to PCT Rules 20.4(d), 26.3ter(b) and 26.3ter(d). As a result, PCT Rules 20.4(c), 26.3ter(a) and 26.3ter(c) shall not apply to the USPTO as Receiving Office for as long as the aforemen- tioned incompatibility exists. Also, PCT Rules 49.5(cbis) and 49.5(k) continue not to be compatible with the national law applied by the USPTO as a Designated Office. See 35 U.S.C. 371(c)(2). As a result, PCT Rules 49.5(cbis) and 49.5(k) shall not apply to the USPTO as Designated Office for as long as the afore- mentioned incompatibility exists. See the International Bureau' s notice published in PCT Gazette No. 07/1992.< 1805 Where to File an International Application [R-1] 35 U.S.C. 361. Receiving Office. (a) The Patent and Trademark Office shall act as a Receiving Office for international applications filed by nationals or residents of the United States. In accordance with any agreement made between the United States and another country, the Patent and Trademark Office may also act as a Receiving Office for international applications filed by residents or nationals of such country who are entitled to file international applica- tions. ***** See 37 CFR 1.421 - 1.425 as to who can file an interna- tional application. Only if at least one of the applicants is a resident or national of the United States of America may an interna- tional application be filed in the United States Receiving Office (PCT Article 9(1) and (3), PCT Rules 19.1 and 19.2, 35 U.S.C. 361(a) and 37 CFR 1.412(a), 1.421). The con- cepts of residence and nationality are defined in PCT Rules 18.1 and 18.2. For the purpose of filing an international application, the applicant may be either the inventor or the successor in title of the inventor (assignee or owner). How- ever, the laws of the various designated States regarding the requirements for applicants must also be considered when filing an international application. For example, the patent law of the United States of America requires that, for the purposes of designating the United States of America, the applicant(s) must be the inventor(s) (35 U.S.C. 373, PCT Article 27(3)). The United States Receiving Office is located in Crystal Plaza, Building 2, 8th floor, 2011 Jefferson Davis Highway, Arlington, Virginia. International applications and related papers may be deposited directly with the United States Receiving Office or be mailed to: Assistant Commissioner for Patents, Box PCT, Washington, D.C. 20231. It should be noted that the "Express Mail" provisions of 37 CFR 1.10 apply to the filing of all applications and papers filed in the U.S. Patent and Trademark Office, including PCT international applications and related papers and fees. It should be further noted, however, that PCT international applications and papers relating to international applica- tions are specifically excluded from the Certificate of Mail- ing or Transmission procedures under 37 CFR 1.8. This means, for example, that a Demand for international pre- liminary examination cannot be filed using the Certificate of Mailing or Transmission practice under 37 CFR 1.8 if the date of mailing is the date needed for official purposes. If 37 CFR 1.8 is improperly used, the date to be accorded the paper will be the date of actual receipt in the Office unless the receipt date falls on a Saturday, Sunday, or Fed- eral holiday in which case the date of receipt will be the next succeeding day which is not a Saturday, Sunday, or Federal holiday (37 CFR 1.6(a)(3)). Irrespective of the Certification practice under 37 CFR 1.8(a), facsimile transmission (without the benefit of the certificate under 37 CFR 1.8(a)) may be used to submit certain papers in international applications. However, fac- simile transmission may not be used for the filing of an international application, the filing of drawings under 37 CFR 1.437, or the filing of a copy of the international application, and the basic national fee to enter the U.S. national stage under 35 U.S.C. 371. See 37 CFR 1.6(d)(3) and (4), 1.8(a)(2)(i)(D), and 1.8(a)(2)(i)(F). The Demand for international preliminary examination may be filed by facsimile transmission. See MPEP ? 1834.01. The United States Receiving Office staff is available to offer guidance on PCT requirements and procedures. See MPEP ? 1730 for information on contacting the staff and other available means for obtaining information. WARNING - although the United States patent law at 35 U.S.C. 21(a) authorizes the Commissioner to prescribe by rule that any paper or fee required to be filed in the Patent and Trademark Office will be considered filed in the Office on the date on which it was deposited with the United States Postal Service, PCT Rule 20.1(a) provides for marking the "date of actual receipt on the request." Although the "Express Mail" provisions under 37 CFR 1.10 have not been contested to date regarding PCT appli- cations, applicants should be aware of a possible different interpretation by foreign authorities. PCT Rule 19.4 provides for transmittal of an interna- tional application to the International Bureau as Receiving Office in certain instances. For example, when the interna- tional application is filed with the United States Receiving Office and the language in which the international applica- tion is filed is not accepted by the United States Receiving Office, or if the applicant does not have the requisite resi- dence or nationality, the application may be forwarded to the International Bureau for processing in its capacity as a Receiving Office. See ** 37 CFR 1.412(c)(6). The Receiving Office of the International Bureau will consider the international application to be received as of the date accorded by the United States Receiving Office. This prac- tice will avoid the loss of a filing date in those instances where the United States Receiving Office is not competent to act, but where the international application indicates an applicant to be a national or resident of a PCT Contracting state or is in a language accepted under PCT Rule 12.1(a) by the International Bureau as a Receiving Office. Of course, where questions arise regarding residence or nationality, i.e., the U.S. is not clearly competent, the appli- cation will be forwarded to the International Bureau as Receiving Office. Note, where no residence or nationality is indicated, the U.S. is not competent, and the application will be forwarded to the International Bureau as Receiving Office so long as the necessary fee is paid. The fee is an amount equal to the transmittal fee. If all of the applicants are indicated to be residents or nationals of non-PCT Contracting States, PCT Rule 19.4 does not apply, and the application is denied an interna- tional filing date. 1807 Agent or Common Representative and, General Power of Attorney 37 CFR 1.455. Representation in international applications. (a) Applicants of international applications may be represented by attorneys or agents registered to practice before the Patent and Trademark Office or by an applicant appointed as a common representative (PCT Art. 49, Rules 4.8 and 90 and ? 10.10). If applicants have not appointed an attorney or agent or one of the applicants to represent them, and there is more than one applicant, the applicant first named in the request and who is entitled to file in the U.S. Receiving Office shall be considered to be the common representative of all the applicants. An attorney or agent having the right to practice before a national office with which an international application is filed and for which the United States is an International Searching Authority or International Preliminary Examining Authority may be appointed to represent the applicants in the international applica- tion before that authority. An attorney or agent may appoint an associate attorney or agent who shall also then be of record (PCT Rule 90.1(d)). The appointment of an attorney or agent, or of a common representative, revokes any earlier appointment unless otherwise indicated (PCT Rule 90.6(b) and (c)). (b) Appointment of an agent, attorney or common representative (PCT Rule 4.8) must be effected either in the Request form, signed by all applicants, or in a separate power of attorney submitted either to the United States Receiving Office or to the International Bureau. (c) Powers of attorney and revocations thereof should be submitted to the United States Receiving Office until the issuance of the international search report. (d) The addressee for correspondence will be as indicated in sec- tion 108 of the Administrative Instructions. Where an appointment of an agent or common represen- tative is effected by a separate power of attorney, that power of attorney must be submitted to either the receiving Office or the International Bureau. However, a power of attorney appointing an agent or subagent to represent the applicant specifically before the International Searching Authority or the International Preliminary Examining Authority must be submitted directly to that Authority. "GENERAL" POWER OF ATTORNEY "General" powers of attorney are recognized for the pur- pose of filing and prosecuting an international application before the international authorities. The original general power of attorney should be deposited with the Interna- tional Application Processing Division which is the central focus for PCT matters throughout the Office. Any applica- tions relying thereon must include a copy thereof. A gen- eral power of attorney form is provided in the annex to the PCT Applicant's Guide. Any general power of attorney must be filed with the receiving Office if the appointment was for the purposes of the international phase generally, or with the International Searching Authority or International Preliminary Examin- ing Authority if the appointment was specifically to repre- sent the applicant before that Authority. The appointment will then be effective in relation to any particular applica- tion filed by that applicant provided that the general power of attorney is referred to in the request, the Demand or a separate notice, and that a copy of the general power of attorney is attached to that request, Demand or separate notice. That copy of the signed original need not, itself, be separately signed. See Annex Z of the PCT Applicant's Guide for a suitable model form for a general power of attorney. The PCT Applicant's Guide is available from the International Bureau in Geneva, Switzerland. 1808 Change in or Revocation of the Appointment of an Agent or a Common Representative PCT Rule 90. Agents and Common Representatives ***** 90.6.Revocation and Renunciation (a) Any appointment of an agent or common representative may be revoked by the persons who made the appointment or by their successors in title, in which case any appointment of a sub-agent under Rule 90.1(d) by that agent shall also be considered as revoked. Any appointment of a sub-agent under Rule 90.1(d) may also be revoked by the applicant con- cerned. (b) The appointment of an agent under Rule 90.1(a) shall, unless otherwise indicated, have the effect of revoking any earlier appointment of an agent made under that Rule. (c) The appointment of a common representative shall, unless oth- erwise indicated, have the effect of revoking any earlier appointment of a common representative. (d) An agent or a common representative may renounce his appointment by a notification signed by him. (e) Rule 90.4(b) and (c) shall apply, mutatis mutandis, to a docu- ment containing a revocation or renunciation under this Rule. 37 CFR 1.455. Representation in international applications. (a) Applicants of international applications may be represented by attorneys or agents registered to practice before the Patent and Trademark Office or by an applicant appointed as a common representative (PCT Art. 49, Rules 4.8 and 90 and ? 10.10). If applicants have not appointed an attorney or agent or one of the applicants to represent them, and there is more than one applicant, the applicant first named in the request and who is entitled to file in the U.S. Receiving Office shall be considered to be the common representative of all the applicants. An attorney or agent having the right to practice before a national office with which an international application is filed and for which the United States is an International Searching Authority or International Preliminary Examining Authority may be appointed to represent the applicants in the international applica- tion before that authority. An attorney or agent may appoint an associate attorney or agent who shall also then be of record (PCT Rule 90.1(d)). The appointment of an attorney or agent, or of a common representative, revokes any earlier appointment unless otherwise indicated (PCT Rule 90.6(b) and (c)). (b) Appointment of an agent, attorney or common representative (PCT Rule 4.8) must be effected either in the Request form, signed by all applicants, or in a separate power of attorney submitted either to the United States Receiving Office or to the International Bureau. (c) Powers of attorney and revocations thereof should be submitted to the United States Receiving Office until the issuance of the international search report. (d) The addressee for correspondence will be as indicated in sec- tion 108 of the Administrative Instructions. The appointment of an agent or a common representative can be revoked. The document containing the revocation must be signed by the persons who made the appointment or by their successors in title. The appointment of a sub- agent may also be revoked by the applicant concerned. If the appointment of an agent is revoked, any appointment of a sub-agent by that agent is also considered revoked. The appointment of an agent for the international phase in general automatically has the effect, unless otherwise indicated, of revoking any earlier appointment of an agent. The appointment of a common representative similarly has the effect, unless otherwise indicated, of revoking any ear- lier appointment of a common representative. The rules for signing and submission of a power of attor- ney also apply to a revocation of an appointment. Renunciation of an appointment may be made by means of a notification signed by the agent or common representa- tive. The rules for signing and submission of a power of attorney apply also to a renunciation. The applicant is informed of the renunciation by the International Bureau. U.S. attorneys or agents wishing to withdraw from repre- sentation in international applications may request to do so. To expedite the handling of requests for permission to with- draw as attorney, the request should be submitted in tripli- cate (original and two copies) to Box PCT and should indicate the present mailing addresses of the attorney who is withdrawing and of the applicant. Because the Patent and Trademark Office (PTO) does not recognize law firms, each attorney of record must sign the notice of withdrawal, or the notice of withdrawal must contain a clear indication of one attorney signing on behalf of another. The PTO usually requires that there be at least 30 days between approval of withdrawal and the expiration date of a time response period so that the applicant will have suffi- cient time to obtain other representation or take other action. If less than 30 days remains in a running response period, a request to withdraw is normally disapproved. For withdrawal of attorney or agent in the national stage, see MPEP ? 402.06. 1810 Filing Date Requirements PCT Article 11. Filing Date and Effects of the International Application (1) The receiving Office shall accord as the international filing date the date of receipt of the international application, provided that that Office has found that, at the time of receipt: (i) the applicant does not obviously lack, for reasons of resi- dence or nationality, the right to file an international application with the receiving Office, (ii) the international application is in the prescribed language, (iii) the international application contains at least the following elements: (a) an indication that it is intended as an international appli- cation, (b) the designation of at least one Contracting State, (c) the name of the applicant, as prescribed, (d) a part which on the face of it appears to be a description, (e) a part which on the face of it appears to be a claim or claims. ***** 35 U.S.C. 363. International application designating the United States: Effect. An international application designating the United States shall have the effect, from its international filing date under article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trade- mark Office except as otherwise provided in section 102(e) of this title. 35 U.S.C. 373. Improper Applicant. An international application designating the United States, shall not be accepted by the Patent and Trademark Office for the national stage if it was filed by anyone not qualified under chapter 11 of this title to be an applicant for the purpose of filing a national application in the United States. Such international applications shall not serve as the basis for the benefit of an earlier filing date under section 120 of this title in a subsequently filed application, but may serve as the basis for a claim of the right of priority under section 119 of this title, if the United States was not the sole country designated in such international application. 37 CFR 1.431. International application requirements. (a) An international application shall contain, as specified in the Treaty and the Regulations, a Request, a description, one or more claims, an abstract, and one or more drawings (where required). (PCT Art. 3(2) and Section 207 of the Administrative Instructions.) (b) An international filing date will be accorded by the United States Receiving Office, at the time of receipt of the international applica- tion, provided that: (1) At least one applicant (? 1.421) is a United States resident or national and the papers filed at the time of receipt of the international application so indicate (35 U.S.C. 361(a), PCT Art. 11(1)(i)). (2) The international application is in the English language (35 U.S.C. 361(c), PCT Art. 11(1)(ii)). (3) The international application contains at least the following elements (PCT Art. 11(1)(iii)): (i) An indication that it is intended as an international appli- cation (PCT Rule 4.2); (ii) The designation of at least one Contracting State of the International Patent Cooperation Union (? 1.432); (iii) The name of the applicant, as prescribed (note ?? 1.421- 1.424); (iv) A part which on the face of it appears to be a description; and (v) A part which on the face of it appears to be a claim. (c) Payment of the basic portion of the international fee (PCT Rule 15.2) and the transmittal and search fees (? 1.445) may be made in full at the time the international application papers required by paragraph (b) of this section are deposited or within one month thereafter. The basic, trans- mittal, and search fee payable is the basic, transmittal, and search fee in effect on the receipt date of the international application. (1) If the basic, transmittal and search fees are not paid within one month from the date of receipt of the international application and prior to the sending of a notice of deficiency, applicant will be notified and given one month within which to pay the deficient fees plus a late payment fee equal to the greater of: (i) Fifty percent of the amount of the deficient fees up to a maximum amount equal to the basic fee; or (ii) An amount equal to the transmittal fee (PCT Rule 16bis). (2) The one-month time limit set pursuant to this paragraph to pay deficient fees may not be extended. (d) If the payment needed to cover the transmittal fee, the basic fee, the search fee, one designation fee and the late payment fee pursuant to paragraph (c) of this section is not timely made in accordance with PCT Rule 16bis.1(e), the Receiving Office will declare the international applica- tion withdrawn under PCT Article 14(3)(a). THE "INTERNATIONAL FILING DATE" An international filing date is accorded on the date on which the international application was received by the receiving Office or pursuant to the correction of defects on a later date (PCT Articles 11(1) and 11(2)(b) and PCT Rules 20.1, 20.3, 20.4(a), 20.5, and 20.6): in the former case, the international filing date will be the date on which the international application was received by the receiving Office; in the latter case, the international filing date will be the date on which the correction was received by the receiving Office. Any correction must be submitted by the applicant within certain time limits. Where all the sheets pertaining to the same international application are not received on the same day by the receiving Office, in most instances, the date of receipt of the application will be amended to reflect the date on which the last missing sheets were received. As an amended date of receipt may cause the priority claim to be forfeited, applicants should assure that all sheets of the application are deposited with the receiving Office on the same day. For particulars see PCT Rule 20.2. An all too common occurrence is that applicants will file an international application in the U.S. Receiving Office and no applicant has a U.S. residence or nationality. Appli- cants are cautioned to be sure that at least one applicant is a resident or national of the U.S. before filing in the U.S. Receiving Office. Where no applicant indicated on the request papers is a resident or national of the United States, the application is not entitled to a filing date since the applicant(s) obviously lacks the right to file in the U.S. Receiving Office. Such applicant is notified pursuant to PCT Article 11(2)(a) that, at the time of receipt, the appli- cant obviously lacked under Article 11(1)(i) the right to file based upon residence or nationality. A timely reply to such notice results in applicant being accorded a filing date under Article 11(2)(b) as of the date of the reply if applicant establishes residence or nationality in the United States. See 35 U.S.C. 373. 1812 Elements of the International Application PCT Article 3. The International Application (1) Applications for the protection of inventions in any of the Con- tracting States may be filed as international applications under this Treaty. (2) An international application shall contain, as specified in this Treaty and the Regulations, a request, a description, one or more claims, one or more drawings (where required), and an abstract. (3) The abstract merely serves the purpose of technical information and cannot be taken into account for any other purpose, particularly not for the purpose of interpreting the scope of the protection sought. (4) The international application shall: (i) be in a prescribed language; (ii) comply with the prescribed physical requirements; (iii) comply with the prescribed requirement of unity of inven- tion; (iv) be subject to the payment of the prescribed fees. Any international application must contain the following elements: request, description, claim or claims, abstract and one or more drawings (where drawings are necessary for the understanding of the invention (PCT Article 3(2) and PCT Article 7(2)). The elements of the international appli- cation are to be arranged in the following order: the request, the description (other than any sequence listing part thereof), the claims, the abstract, the drawings, and the sequence listing part of the description (where applicable) (PCT Administrative Instructions, Section 207(a)). All the sheets contained in the international application must be numbered in consecutive Arabic numerals by using the fol- lowing separate series of numbers: a first series applying to the request; a second series to the description, claims and abstract; a third series to the drawings (where applicable); and a further series to the sequence listing part of the description (where applicable) (PCT Rule 11.7 and PCT Administrative Instructions Section 207(b)). Only one copy of the international application need be filed in the United States Receiving Office (37 CFR 1.433(a)). The request is made on a standardized form (Form PCT/RO/101), copies of which can be obtained from the PTO. Letters requesting forms should be addressed "Box PCT." The "Request" form can now be presented as a computer printout. The details of a computer generated Request form are provided in Administrative Instructions Section 102. 1817 PCT Member States [R-1] The following is a list of PCT Member States: State Ratification, Accession or Declaration Date of Ratification, Accession or Declaration Date From Which State May Be Designated (1) Central African Republic? Accession September 1971 01 June 1978 (2) Senegal? Ratification 08 March 1972 01 June 1978 (3) Madagascar Ratification 27 March 1972 01 June 1978 (4) Malawi Accession 16 May 1972 01 June 1978 (5) Cameroon? Accession 15 March 1973 01 June 1978 (6) Chad? Accession 12 February 1974 01 June 1978 (7) Togo? Ratification 28 January 1975 01 June 1978 (8) Gabon? Accession 06 March 1975 01 June 1978 (9) United States of America Ratification 26 November 1975 01 June 1978 (10) Germany?? Ratification 19 July 1976 01 June 1978 (11) Congo? Accession 08 August 1977 01 June 1978 (12) Switzerland?? Ratification 14 September 1977 01 June 1978 (13) United Kingdom?? Ratification 24 October 1977 01 June 1978 (14) France?? Ratification 25 November 1977 01 June 1978 (15) Russian Federation Ratification 29 December 1977 01 June 1978 (16) Brazil Ratification 09 January 1978 01 June 1978 (17) Luxembourg?? Ratification 31 January 1978 01 June 1978 (18) Sweden?? Ratification 17 February 1978 01 June 1978 (19) Japan Ratification 01 July 1978 01 October 1978 (20) Denmark?? Ratification 01 September 1978 01 December 1978 (21) Austria?? Ratification 23 January 1979 23 April 1979 (22) Monaco Ratification 22 March 1979 22 June 1979 (23) Netherlands?? Ratification 10 April 1979 10 July 1979 (24) Romania Accession 23 April 1979 23 July 1979 (25) Norway Ratification 01 October 1979 01 January 1980 (26) Liechtenstein?? Accession 19 December 1979 19 March 1980 (27) Australia Accession 31 December 1979 31 March 1980 (28) Hungary Ratification 27 March 1980 27 June 1980 (29) Democratic People's Republic of Korea (North Korea ) Accession 08 April 1980 08 July 1980 (30) Finland?? Ratification 01 July 1980 01 October 1980 (31) Belgium?? Ratification 14 September 1981 14 December 1981 (32) Sri Lanka Ratification 26 November 1981 26 February 1982 (33) Mauritania Accession 13 January 1983 13 April 1983 (34) Sudan Accession 16 January 1984 16 April 1984 (35) Bulgaria Accession 21 February 1984 21 May 1984 (36) Republic of Korea (South Korea) Accession 10 May 1984 **>10 August 1984< (37) Mali? Accession 19 July 1984 19 October 1984 (38) Barbados Accession 12 December 1984 12 March 1985 (39) Italy?? Ratification 28 December 1984 28 March 1985 (40) Benin? Accession 26 November 1986 26 February 1987 (41) Burkina Faso? Accession 21 December 1988 21 March 1989 (42) Spain?? Accession 16 August 1998 16 November 1989 (43) Canada Ratification 02 October 1989 02 January 1990 (44) Greece?? Accession 09 July 1990 09 October 1990 (45) Poland Accession 25 September 1990 25 December 1990 (46) Cote d'Ivoire? Accession 30 January 1991 30 April 1991 (47) Czech Republic Declaration 18 December 1992 01 January 1993 (48) Guinea? Accession 27 February 1991 27 May 1991 (49) Mongolia Accession 27 February 1991 27 May 1991 (50) Ireland?? Ratification 01 May 1992 01 August 1992 (51) New Zealand Accession 01 September 1992 01 December 1992 (52) Portugal?? Accession 24 August 1992 24 November 1992 (53) Ukraine Accession 21 September 1992 21 September 1992 (54) Slovakia Declaration 30 December 1992 01 January 1993 (55) Viet Nam Accession 10 December 1992 10 March 1993 (56) Niger Accession 21 December 1992 21 March 1993 (57) Kazakstan Declaration 16 February 1993 25 December 1991 (58) Belarus Declaration 14 April 1993 25 December 1991 (59) Latvia Accession 07 June 1993 07 September 1993 (60) Uzbekistan Declaration 18 August 1993 25 December 1991 (61) China Accession 01 October 1993 01 January 1994 (62) Slovenia Accession 01 December 1993 01 March 1994 (63) Trinidad and Tobago Accession 10 December 1993 10 March 1994 (64) Georgia Declaration 18 January 1994 25 December 1991 (65) Kyrgyzstan Declaration 14 February 1994 25 December 1991 (66) Republic of Moldova Declaration 14 February 1994 25 December 1991 (67) Tajikistan Declaration 14 February 1994 25 December 1991 (68) Kenya Accession 08 March 1994 08 June 1994 (69) Lithuania Accession 05 April 1994 05 July 1994 (70) Armenia Declaration 17 May 1994 25 December 1991 (71) Estonia Accession 24 May 1994 24 August 1994 (72) Liberia Accession 27 May 1994 27 August 1994 (73) Swaziland Accession 20 June 1994 20 September 1994 (74) Mexico Accession 01 October 1994 01 January 1995 (75) Uganda Accession 09 November 1994 09 February 1995 (76) Singapore Accession 23 November 1994 23 February 1995 (77) Iceland Accession 23 December 1994 23 March 1995 (78) Turkmenistan Declaration 01 March 1995 25 December 1991 (79) The former Yugoslov Republic of Macedonia Accession 10 May 1995 10 August 1995 (80) Albania Accession 04 July 1995 04 October 1995 (81) Lesotho Accession 21 July 1995 21 October 1995 (82) Azerbaijan Accession 25 September 1995 25 December 1995 (83) Turkey Accession 01 October 1995 01 January 1996 (84) Israel Ratification 01 March 1996 01 June 1996 (85) Cuba Accession 16 April 1996 16 July 1996 (86) Saint Lucia Accession 30 May 1996 30 August 1996 (87) Bosnia and Herzegovina Accession 07 June 1996 07 September 1997 (88) Federal Republic of Yugoslavia Ratification 01 November 1996 01 February 1997 (89) Ghana Accession 26 November 1996 16 February 1997 (90) Zimbabwe Accession 11 March 1997 11 June 1997 (91) Sierra Leone Accession 17 March 1997 17 June 1997 (92) Indonesia Accession 05 June 1997 05 September 1997 (93) Gambia Accession 09 September 1997 09 December 1997 (94) Guinea-Bissau Accession 12 September 1997 12 December 1997 >(95) Cyprus Accession 01 January 1998 01 April 1998 (96) Croatia Accession 01 April 1998 01 July 1998 (97) Grenada Accession 22 June 1998 22 September 1998 (98) India Accession 07 September 1998 07 December 1998 (99) United Arab Emirates Accession 10 December 1998 10 March 1999 (100) Republic of South Africa Accession 16 December 1998 16 March 1999 (101) Republic of Costa Rica Accession 03 May 1999 03 August 1999 (102) Commonwealth of Dominica Accession 07 May 1999 07 August 1999 (103) United Republic of Tanzania Accession 14 June 1999 14 September 1999 (104) Morrocco Accession 08 July 1999 08 October 1999 (105 Algeria Ratification 08 December 1999 08 March 2000< ?Members of Africa Intellectual Property Organization (OAPI) regional patent system. Only regional patent protection is available for OAPI member states. A designation of any state is an indication that all OAPI states have been desig- nated. Note: only one designation fee is due regardless of the number of OAPI member states designated. ??Members of European Patent Convention (EPC) regional patent system. Either national patents or European patents for member States are available through PCT, except for Belgium, France, Greece, Ireland, Italy, Monaco, and Nether- lands, for which only European patents are available if the PCT is used. Note: only one PCT designation fee is due if European patent protection is sought for one, several, or all EPC member countries. The following states are members of African Regional Industrial Property Organization (ARIPO) regional patent system: (4) Malawi, (34) Sudan, (68) Kenya, (73) Swaziland, (75) Uganda, (81) Lesotho, (89) Ghana, (90) Zimbabwe, and (93) Gambia. The following states are members of the Eurasian (EA) regional patent system: (15) Russian Federation, (57) Kazak- stan, (58) Belarus, (65) Kyrgyzstan, (66) Republic of Moldova, (67) Tajikistan, (70) Armenia, (78) Turkmenistan, and (82) Azerbaijan. The Federal Republic of Yugoslavia is comprised of the Republics of Serbia and Montenegro. The World Intellectual Property Organization has utilized the two-letter code "YU" to refer to the Federal Republic of Yugo- slavia becoming a party to the Patent Cooperation Treaty. The United States understands that the scope of the territory covered by the designation encompasses only the Republics of Serbia and Montenegro. 1817.01 Designation of States and Precautionary Designations 37 CFR 1.432. Designation of States and payment of designation 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 desig- nations 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 pay- ment 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 interna- tional 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 appli- cant 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 designa- tion 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 para- graph (b) is: (1) The designation fee in effect on the filing date of the interna- tional 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 inter- national 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), appli- cant 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 pri- ority date by: (i) Filing a written notice with the United States Receiving Office specifying the national and/or regional designations being con- firmed; (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 pri- ority 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 specific Contracting States in or for which the applicant is seeking protection for his or her invention. Such a designa- tion is called a "specific" designation, as distinct from the "precautionary" designations. Designations for the purpose of obtaining national patents are effected by indicating each Contracting State concerned. On the printed form, this is accomplished by marking the appropriate check-boxes next to the names of the States. Where the applicant is seeking a European patent (for the States party to the European Patent Convention) or an OAPI patent, the checkbox "European Patent" or the checkbox "OAPI Patent" must be marked. Switzerland and Liechtenstein cannot be desig- nated independently of each other. Belgium, France, Greece, Italy, Monaco, and Ireland can be designated only for a European Patent since only a Euro- pean patent (and not a national patent) can be obtained via the PCT route for those countries. Where any of the other States for which both a national and a European patent are available is designated twice in the same application, namely for national protection and for a European patent, the application is treated in the international phase as an application for a national patent in that State and also as an application for a European patent with effect for that State. All designations must be made in the international appli- cation on filing; none may be added later. However, there is a safety net designed to protect applicants who make mis- takes 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 con- tains a statement relating to the confirmation of any precau- tionary designations so made. That statement must declare that any such designation is subject to confirmation (as pro- vided 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 desig- nations, 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 other- wise. 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 desig- nations except where the applicant later decides to confirm them. Precautionary designations will be regarded as with- drawn 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 desig- nations so made are subject to confirmation as provided in Rule 4.9(c) and that any designation which is not so con- firmed 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 designa- tions 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 (EP or OAPI) 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 (EP or OAPI) 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 PCT Rule 4. The Request (Contents) ***** 4.14.Continuation or Continuation-in-Part If the applicant wishes his international application to be treated, in any designated State, as an application for a continuation or a continuation-in- part of an earlier application, he shall so indicate in the request and shall identify the parent application involved. ***** Box No. V and the Supplemental Box of the Request form should be used where the applicant has an earlier application in a country designated in the international application and where special title or treatment of the inter- national application is desired. For example, if the appli- cant has a pending United States application, the international application could contain additional subject matter and be treated as a continuation-in-part in the United States, if the United States is designated in the international application (PCT Rule 4.14). In this example, the entries to be placed in Box No. V would be as follows: "United States of America; continuation-in-part;" and in the Supplemental Box, an entry such as "Continuation of Box No. V, Parent application for U.S. designation: United States of America, 20 May 1981, 222,222" identifying the earlier pending application should be inserted. 1819 Earlier International or International-Type Search PCT Rule 4. Request (Contents) ***** 4.11.Reference to Earlier Search If an international or international-type search has been requested on an application under Article 15(5) or if the applicant wishes the Interna- tional Searching Authority to base the international search report wholly or in part on the results of a search, other than an international or interna- tional-type search, made by the national Office or intergovernmental orga- nization which is the International Searching Authority competent for the international application, the request shall contain a reference to that fact. Such reference shall either identify the application (or its translation, as the case may be) in respect of which the earlier search was made by indi- cating country, date and number, or the said search by indicating, where applicable, date and number of the request for such search. ***** Certain International Searching Authorities refund part or all of the international search fee or reduce the amount of the international search fee where the international search can be based wholly or partly on an earlier search (whether an international, international-type, or other search) made by them. The United States provides for a reduced search fee where there is a corresponding prior U.S. national non- provisional application. Where the earlier search by the International Searching Authority was made in relation to a national, regional (for instance, European) or international application, that appli- cation must be identified in Box No. VII of the request by an indication of the country of filing (or the European Patent Office), and the number and filing date of that appli- cation. Note that, if the earlier search was made on the basis of a translation of that application into a language other than that in which the application was filed, that translation must also be identified in Box No. VII. Where the earlier search was made independently of a patent granting proce- dure (for instance, a standard search by the European Patent Office), a reference must be made to the date of the request for that search and the number given to the request by the International Searching Authority. The United States Patent and Trademark Office performs an international-type search on all U.S. national applica- tions filed on and after 01 June 1978. No specific request by the applicant is required and no number identifying the international-type search is assigned by the Office. All ear- lier U.S. applications referred to in Box No. VI and Box No. VII as well as all U.S. applications referred to in sepa- rate transmittal letters will be considered by the Office. See 37 CFR 1.104(a)(3) and (a)(4). The forms to be used for recording an international-type search can be obtained from the International Application Processing Division. Box No. VII should be used to identify related interna- tional applications whether or not priority of that applica- tion is claimed. 1820 Signature of Applicant PCT Rule 4. Request (Contents) ***** 4.15.Signature (a) Subject to paragraph (b), the request shall be signed by the applicant or, if there is more than one applicant, by all of them. (b) Where two or more applicants file an international application which designates a State whose national law requires that national applications be filed by the inventor and where an applicant for that designated State who is an inventor refused to sign the request or could not be found or reached after diligent effort, the request need not be signed by that applicant if it is signed by at least one applicant and a state- ment is furnished explaining, to the satisfaction of the receiving Office, the lack of the signature concerned. ***** SIGNATURE OF APPLICANT OR AGENT The international application must be signed in Box No. IX of the request by the applicant, or, where there are two or more applicants, by all of them. Subject to certain condi- tions, the request may be signed by the agent instead of the applicant(s). Pursuant to 37 CFR 1.4(d), the request filed may be either an original, or a copy thereof. Certain papers may be filed by facsimile transmission. See 37 CFR 1.6(d) and the discussion in MPEP ? 1805. The international application may be signed by an agent, but in that case the agent must be appointed as such by the applicant in a separate power of attorney signed by the applicant. If there are two or more applicants, the request may be signed by an agent on behalf of all or only some of them; in that case the agent must be appointed as such in one or more powers of attorney signed by the applicants on whose behalf the agent signs the application. Where a power of attorney appointing an agent who signs an inter- national application is missing, the signature is treated as missing until the power of attorney is submitted. The signature should be executed in black indelible ink. The name of each person signing the international applica- tion should be indicated (preferably typewritten) next to the signature. Where a person signs on behalf of a legal entity (an organization such as a corporation, university, nonprofit organization, or governmental agency), his or her name and the capacity in which he or she signs should be indicated. Proof of the person's authority to sign on behalf of the legal entity will be required if that person does not possess apparent authority to sign on behalf of the legal entity. An officer (President, Vice-President, Secretary, Treasurer) of an organization is presumed to have authority to sign on behalf of that organization. The signature of the chairman of the board is also acceptable, but not the signature of an individual director. Variations of these titles (such as vice- president for sales, executive vice-president, assistant trea- surer, vice-chairman of the board of directors) are accept- able. A person having a title (manger, director, administrator, general counsel) that does not clearly set forth that person as an officer of the organization is not pre- sumed to be an officer or to have the authority to sign on behalf of the organization. An attorney does not generally have apparent authority to sign on behalf of an organiza- tion. Proof that a person has the authority to sign on behalf of a legal entity may take the form of a copy of a resolution of the board of directors, a provision of the bylaws, or a copy of a paper properly delegating authority to that person to sign the international application on behalf of the legal entity. It is also acceptable to have a person sign the interna- tional application on behalf of a legal entity if that person submits a statement that the person has the authority to sign the international application on behalf of the legal entity. This statement should be on a separate paper and must not appear on the Request (or Demand) form itself. The state- ment must include a clause such as "The undersigned (whose title is supplied below) is empowered to sign the Request on behalf of the applicant." A power of attorney or authorization of agent from a per- son signing on behalf of a legal entity to a registered patent attorney or agent will be required if the attorney or agent signs the international application. Additional proof of authority may be required by the USPTO in any interna- tional application. Where an applicant is temporarily unavailable, the inter- national application can be filed without his or her signa- ture. The lack of an applicant's signature or of a signed power of attorney is a correctable defect under PCT Article 14(1)(a)(i) and (b), and can be remedied by filing a copy of the request (or, where the request has been signed by an agent, of a power of attorney) duly signed by the applicant within the time limit fixed by the receiving Office for the correction of this defect. APPLICANT INVENTOR UNAVAILABLE OR UNWILLING TO SIGN THE INTERNATIONAL APPLICATION OR OTHER DOCUMENTS The PCT provides a special procedure, where two or more applicants file an international application designat- ing the United States of America, which enables the inter- national application to proceed if an applicant inventor for the United States of America refuses to sign or cannot be found or reached after diligent effort. This procedure makes an exception to the general rule that all applicants must sign the request (or a separate power of attorney appointing an agent who then signs the request). Its operation is limited to signature of the request by applicants for the purposes of the designation of a State whose national law requires that national applications be filed by the inventor (the United States of America is the only Contracting State to have such a requirement in its national law). It is provided by PCT Rule 4.15(b) that, where an appli- cant inventor for the designation of the United States of America refused to sign the request or could not be found or reached after diligent effort, the request need not be signed by that applicant inventor if it is signed by at least one applicant and a statement is furnished explaining, to the satisfaction of the receiving Office, the lack of the signature concerned. If such a statement is furnished to the satisfaction of the receiving Office, the international appli- cation complies with the requirements of PCT Article 14(1)(a)(i) for the purposes of all designated States (includ- ing the United States of America) without adverse conse- quences in the international phase. However, additional proofs may be required by the United States Patent and Trademark Office after entry into the national phase if the required oath or declaration by the inventor is not signed by all the applicant inventors. The lack of a signature constitutes a defect under PCT Article 14(1)(a)(i), and the statement must thus be filed within the time limit set by the receiving Office for correc- tion of such defects in accordance with PCT Article 14(1)(b) and PCT Rule 26.2. That time limit is fixed, in each case, in the invitation by the receiving Office to cor- rect any defects under PCT Article 14(1)(a); the time limit must be reasonable under the circumstances, must be not less than 1 month from the date of the invitation, and may be extended by the receiving Office at any time before a decision is taken under PCT Rule 26. If the request lacks the signature of an applicant inventor for the United States of America and a satisfactory state- ment cannot be furnished for the purposes of PCT Rule 4.15(b), the international application will be considered withdrawn. The Receiving Office will issue a declaration of withdrawal. Provisions similar to PCT Rule 4.15(b) apply to excuse a lack of signature by an applicant inventor for the United States of America of certain other documents connected with the international application, provided that a similar statement is furnished explaining the lack of signature to the Office or Authority concerned. These documents are the Demand, any notice of a later election, and a notice of withdrawal of the international application, a designation, a priority claim, or an election. Note, however, that the signa- tures of all the applicants are not required for all of those documents for example, the Demand may be signed by the common representative (including an applicant who is con- sidered to be the common representative). PCT Rule 4.15(b) is implemented in the United States through 37 CFR 1.425, which provides: 37 CFR 1.425. Filing by other than inventor. Where an international application which designates the United States of America is filed and where one or more inventors refuse to sign the Request for the international application or cannot be found or reached after diligent effort, the Request need not be signed by such inventor if it is signed by another applicant. Such international application must be accompanied by a statement explaining to the satisfaction of the Commis- sioner the lack of the signature concerned. Where there are joint inventors other than the nonsign- ing applicant inventor, the available joint inventors should sign the request form on behalf of themselves and the non- signing inventor. Where a sole inventor or all of the joint inventors refuse to sign the request or can not be located, another applicant may make the application on behalf of the nonsigning inventor(s). In both instances, the applica- tion must be accompanied by a statement explaining the facts that the nonsigning inventor(s) either refuse to sign or cannot be located after diligent effort. Such proof should take the form of statements by persons with first hand knowledge of the pertinent facts. APPLICANT INVENTOR DECEASED 37 CFR 1.422. When the inventor is dead. In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may file an international application which designates the United States of America. Proof of the authority of the legal representative must be filed. Such proof normally takes the form of a certificate of the clerk of a competent court or the register of wills that the legal representative's appointment is still in full force and effect. Such certificate should be signed by an officer and authenticated by the seal of the court by which the same was issued. If the certificate is not in the English lan- guage, an English translation is also required. In the case of foreign executors or administrators, a consular officer of the United States or a notary public from a member country to the Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents must authenti- cate the signature of the foreign officer attesting to the papers submitted as proof of authority. See MPEP ? 409.01(b) and ? 602.04. 1821 The Request A general overview of certain aspects of the request fol- lows. 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 Patent and Trademark Office. Letters requesting printed forms should be marked "Box 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) International applications which designate the United States of America shall include: (1) The name, address and signature of the inventor, except as provided by ?? 1.421(d), 1.422, 1.423 and 1.425; (2) A reference to any copending national application or interna- tional application designating the United States of America, if the benefit of the filing date for the prior copending application is to be claimed. 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 receiv- ing Office with which he/she plans to file his/her interna- tional application, or from the International Bureau. Details of the requirements for the request if presented as a com- puter printout are set out in Administrative Instructions Section 102(h). 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, (normally) the inventor, and the agent (if any), and must contain the desig- nation of at least one Contracting State. The request must contain an indication of any wish of the applicant's to obtain a European patent rather than, or in addition to, a national patent in respect of a designated State. DATES Each date appearing in the international application or in any correspondence must be indicated by the Arabic num- ber of the day, the name of the month and the Arabic num- ber of the year, in that order. In the request, after, below or above that indication, the date should be repeated in paren- theses with a two-digit Arabic numeral each for the number of the day, the number of the month and the last two figures of the year, in that order and separated by periods, slashes or hyphens, for example, 10 June 1986 (10.06.86); (10/06/ 86) or (10-06-86). Any prospective applicant may obtain English language Request forms free of charge from the United States Patent and Trademark Office, Box PCT, Washington, D.C. 20231. The Request may not contain any matter that is not speci- fied in PCT Rule 4. Any additional material will be deleted ex officio (Administrative Instructions Section 303). 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 con- tinued, e.g., "Continuation of Box No. IV." FILE REFERENCE The applicant or his/her agent may indicate a file refer- ence in the box provided for the 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. The file reference may be composed either of letters of the Latin alphabet or Arabic numerals, or both. It may not exceed 12 characters. The receiving Office, the International Bureau, the International Searching Authority and the International Preliminary Examining Authority will use the file reference in corre- spondence 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 appli- cant 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 resi- dent 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 res- idence 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 indica- tion, 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 per- son), 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. 1823 The Description PCT Article 5. The Description The description shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art. PCT Rule 5. The Description 5.1.Manner of the Description (a) The description shall first state the title of the invention as appearing in the request and shall: (i) specify the technical field to which the invention relates; (ii) indicate the background art which, as far as known to the applicant, can be regarded as useful for the understanding, searching and examination of the invention, and, preferably, cite the documents reflect- ing such art; (iii) disclose the invention, as claimed, in such terms that the technical problem (even if not expressly stated as such) and its solution can be understood, and state the advantageous effects, if any, of the inven- tion with reference to the background art; (iv) briefly describe the figures in the drawings, if any; (v) set forth at least the best mode contemplated by the applicant for carrying out the invention claimed; this shall be done in terms of exam- ples, where appropriate, and with reference to the drawings, if any; where the national law of the designated State does not require the description of the best mode but is satisfied with the description of any mode (whether it is the best contemplated or not), failure to describe the best mode contem- plated shall have no effect in that State; (vi) indicate explicitly, when it is not obvious from the descrip- tion or nature of the invention, the way in which the invention is capable of exploitation in industry and the way in which it can be made and used, or, if it can only be used, the way in which it can be used; the term indus- try is to be understood in its broadest sense as in the Paris Convention for the Protection of Industrial Property. (b) The manner and order specified in paragraph (a) shall be fol- lowed except when, because of the nature of the invention, a different manner or a different order would result in a better understanding and a more economic presentation. (c) Subject to the provisions of paragraph (b), each of the parts referred to in paragraph (a) shall preferably be preceded by an appropriate heading as suggested in the Administrative Instructions. PCT Administrative Instruction Section 204. Headings of the Parts of the Description The headings of the parts of the description should be as follows: (i) for matter referred to in Rule 5.1(a)(i), "Technical Field"; (ii) for matter referred to in Rule 5.1(a)(ii), "Background Art"; (iii) for matter referred to in Rule 5.1(a)(iii), "Disclosure of Invention"; (iv) for matter referred to in Rule 5.1(a)(iv), "Brief Description of Drawings"; (v) for matter referred to in Rule 5.1(a)(v), "Best Mode for Car- rying Out the Invention," or, where appropriate, "Mode(s) for Carrying Out the Invention"; (vi) for matter referred to in Rule 5.1(a)(vi), "Industrial Applica- bility"; (vii) for matter referred to in Rule 5.2(a), "Sequence Listing"; (viii) for matter referred to in Rule 5.2(b), "Sequence Listing Free Text." PCT Administrative Instruction Section 209. Indications as to Deposited Biological Material on a Separate Sheet (a) To the extent that any indication with respect to deposited bio- logical material is not contained in the description, it may be given on a separate sheet. Where any such indication is so given, it shall preferably be on Form PCT/RO/134 and, if furnished at the time of filing, the said Form shall, subject to paragraph (b), preferably be attached to the request and referred to in the check list referred to in Rule 3.3(a)(ii). (b) For the purposes of the Japanese Patent Office when Japan is designated, paragraph (a) applies only to the extent that the said Form or sheet is included as one of the sheets of the description of the international application at the time of filing. 37 CFR 1.435. The description. (a) The application must meet the requirements as to the content and form of the description are set forth in PCT Rules 5, 9, 10 and 11 and sections 204 and 208 of the Administrative Instructions. (b) In international applications designating the United States the description must contain upon filing an indication of the best mode con- templated by the inventor for carrying out the claimed invention. The description must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. It must start with the title of the invention as appearing in Box No. I of the request. PCT Rule 5 contains detailed requirements as to the manner and order of the description, which, generally, should be in six parts. Those parts should have the following headings: "Technical Field," "Background Art," "Disclosure of Invention," "Brief Description of Drawings," "Best Mode for Carrying Out the Invention" or, where appropriate, "Mode(s) for Carrying Out the Invention," "Industrial Applicability," "Sequence Listing," and "Sequence Listing Free Text," where applicable. The details required for the disclosure of the invention so that it can be carried out by a person skilled in the art depend on the practice of the national Offices. It is there- fore recommended that due account be taken of national practice in the United States of America when the descrip- tion is drafted. The need to amend the description during the national phase may thus be avoided. This applies likewise to the need to indicate the "best mode for carrying out the invention." If at least one of the designated Offices requires the indication of the best mode (for instance, the United States Patent and Trademark Office), that best mode must be indicated in the description. A description drafted with due regard to what is said in these provisions will be accepted by all the designated Offices. It might require more care than the drafting of a national patent application, but certainly much less effort than the drafting of multiple applications, which is neces- sary where the PCT route is not used for filing in several countries. 1823.01 Reference to Deposited Biological Material PCT Rule 13bis. Inventions Relating to Biological Material 13bis.1.Definition For the purposes of this Rule, "reference to deposited biological mate- rial" means particulars given in an international application with respect to the deposit of a biological material with a depositary institution or to the biological material so deposited. 13bis.2.References (General) Any reference to deposited biological material shall be made in accor- dance with this Rule and, if so made, shall be considered as satisfying the requirements of the national law of each designated State. 13bis.3.References: Contents; Failure to Include Reference or Indication (a) A reference to deposited biological material shall indicate: (i) the name and address of the depositary institution with which the deposit was made; (ii) the date of deposit of the biological material with that institu- tion; (iii) the accession number given to the deposit by that institution; and (iv) any additional matter of which the International Bureau has been notified pursuant to Rule 13bis.7(a)(i), provided that the requirement to indicate that matter was published in the Gazette in accordance with Rule 13bis.7(c) at least two months before the filing of the international application. (b) Failure to include a reference to deposited biological material or failure to include, in a reference to deposited biological material, an indi- cation in accordance with paragraph (a), shall have no consequence in any designated State whose national law does not require such reference or such indication in a national application. 13bis.4.References: Time Limit for Furnishing Indications (a) Subject to paragraphs (b) and (c), if any of the indications referred to in Rule 13bis.3(a) is not included in a reference to deposited biological material in the international application as filed but is furnished to the International Bureau: (i) within 16 months from the priority date, the indication shall be considered by any designated Office to have been furnished in time; (ii) after the expiration of 16 months from the priority date, the indication shall be considered by any designated Office to have been fur- nished on the last day of that time limit if it reaches the International Bureau before the technical preparations for international publication have been completed. (b) If the national law applicable by a designated Office so requires in respect of national applications, that Office may require that any of the indications referred to in Rule 13bis.3(a) be furnished earlier than 16 months from the priority date, provided that the International Bureau has been notified of such requirement pursuant to Rule 13bis.7(a)(ii) and has published such requirement in the Gazette in accordance with Rule 13bis.7(c) at least two months before the filing of the international applica- tion. (c) Where the applicant makes a request for early publication under Article 21(2)(b), any designated Office may consider any indication not furnished before the technical preparations for international publication have been completed as not having been furnished in time. (d) The International Bureau shall notify the applicant of the date on which it received any indication furnished under paragraph (a), and (i) if the indication was received before the technical prepara- tions for international publication have been completed, indicate that date, and include the relevant data from the indication, in the pamphlet pub- lished under Rule 48; (ii) if the indication was received after the technical preparations for international publication have been completed, notify that date and the relevant data from the indication to the designated Offices. 13bis.5.References and Indications for the Purposes of One or More Designated States; Different Deposits for Different Desig- nated States; Deposits with Depositary Institutions Other Than Those Notified (a) A reference to deposited biological material shall be considered to be made for the purposes of all designated States, unless it is expressly made for the purposes of certain of the designated States only; the same applies to the indications included in the reference. (b) References to different deposits of the biological material may be made for different designated States. (c) Any designated Office may disregard a deposit made with a depositary institution other than one notified by it under Rule 13bis.7(b). 13bis.6.Furnishing of Samples Pursuant to Articles 23 and 40, no furnishing of samples of the depos- ited biological material to which a reference is made in an international application shall, except with the authorization of the applicant, take place before the expiration of the applicable time limits after which national pro- cessing may start under the said Articles. However, where the applicant performs the acts referred to in Articles 22 or 39 after international publi- cation but before the expiration of the said time limits, the furnishing of samples of the deposited microorganism may take place, once the said acts have been performed. Notwithstanding the previous provision, the fur- nishing of samples of the deposited biological material may take place under the national law applicable for any designated Office as soon as, under that law, the international publication has the effects of the compul- sory national publication of an unexamined national application. 13bis.7.National Requirements: Notification and Publication (a) Any national Office may notify the International Bureau of any requirement of the national law: (i) that any matter specified in the notification, in addition to those referred to in Rule 13bis.3(a)(i), (ii) and (iii), is required to be included in a reference to deposited biological material in a national appli- cation; (ii) that one or more of the indications referred to in Rule 13bis.3(a) are required to be included in a national application as filed or are required to be furnished at a time specified in the notification which is earlier than 16 months after the priority date. (b) Each national Office shall notify the International Bureau of the depositary institutions with which the national law permits deposits of bio- logical material to be made for the purposes of patent procedure before that Office or, if the national law does not provide for or permit such deposits, of that fact. (c) The International Bureau shall promptly publish in the Gazette requirements notified to it under paragraph (a) and information notified to it under paragraph (b). PCT Administrative Instruction Section 209. Indications as to Deposited Biological Material on a Separate Sheet (a) To the extent that any indication with respect to deposited bio- logical material is not contained in the description, it may be given on a separate sheet. Where any such indication is so given, it shall preferably be on Form PCT/RO/134 and, if furnished at the time of filing, the said Form shall, subject to paragraph (b), preferably be attached to the request and referred to in the check list referred to in Rule 3.3(a)(ii). (b) For the purposes of the Japanese Patent Office when Japan is designated, paragraph (a) applies only to the extent that the said Form or sheet is included as one of the sheets of the description of the international application at the time of filing. REFERENCES TO DEPOSITED BIOLOGICAL MATERIAL IN THE CASE OF MICROBIOLOGICAL INVENTIONS The PCT does not require the inclusion of a reference to a biological material and/or to its deposit with a depositary institution in an international application; it merely pre- scribes the contents of any "reference to deposited biologi- cal material" (defined as "particulars given ... with respect to the deposit of biological material ... or to the biological material so deposited") which is included in an interna- tional application, and when such a reference must be fur- nished. It follows that the applicant may see a need to make such a reference only when it is required for the purpose of disclosing the invention claimed in the international appli- cation in a manner sufficient for the invention to be carried out by a person skilled in the art that is, when the law of at least one of the designated States provides for the making, for this purpose, of a reference to a deposited biological material if the invention involves the use of a biological material that is not available to the public. Any reference to a deposited biological material furnished separately from the description will be included in the pamphlet containing the published international application. A reference to a deposited biological material made in accordance with the requirements of the PCT must be regarded by each of the designated Offices as satisfying the requirements of the national law applicable in that Office with regard to the contents of such references and the time for furnishing them. A reference may be made for the purposes of all desig- nated States or for one or only some of the designated States. A reference is considered to be made for the pur- pose of all designated States unless it is expressly made for certain designated States only. References to different deposits may be made for the purposes of different desig- nated States. There are two kinds of indication which may have to be given with regard to the deposit of the biological material, namely: (A) indications specified in the PCT Regulations themselves; and (B) additional indications by the national (or regional) Office of (or acting for) a State designated in the interna- tional application and which have been published in the PCT Gazette; these additional indications may relate not only to the deposit of the biological material but also to the biological material itself. The indications in the first category are: (1) the name and address of the depositary institution with which the deposit was made; (2) the date of the deposit with that institution; and (3) the accession number given to the deposit by that institution. U.S. requirements include the name and address of the depository institution at the time of filing, the date of the deposit or a statement that the deposit was made on or before the priority date of the international application and, to the extent possible, a taxonomic description of the bio- logical material. See Annex L of the PCT Applicants Guide. The national laws of some of the national (or regional) Offices require that, besides indications concerning the deposit of a biological material, an indication be given con- cerning the biological material itself, such as, for example, a short description of its characteristics, at least to the extent that this information is available to the applicant. These requirements must be met in the case of international applications for which any such Office is a designated Office, provided that the requirements have been published in the PCT Gazette. Annex L of the PCT Applicant's Guide indicates, for each of the national (or regional) Offices, the requirements (if any) of this kind which have been pub- lished. If any indication is not included in a reference to a deposited biological material contained in the international application as filed, it may be furnished to the International Bureau within 16 months after the priority date unless the International Bureau has been notified (and, at least 2 months prior to the filing of the international application, it has published in the PCT Gazette) that the national law requires the indication to be furnished earlier. However, if the applicant makes a request for early publication, all indi- cations should be furnished by the time the request is made, since any designated Office may regard any indication not furnished when the request is made as not having been fur- nished in time. No check is made in the international phase to determine whether a reference has been furnished within the pre- scribed time limit. However, the International Bureau noti- fies the designated Offices of the date(s) on which indications, not included in the international application as filed, were furnished to it. Those dates are also mentioned in the pamphlet containing the published international application. Failure to include a reference to a deposited biological material (or any indication required in such a ref- erence) in the international application as filed, or failure to furnish it (or the indication) within the prescribed time limit, has no consequence if the national law does not require the reference (or indication) to be furnished in a national application. Where there is a consequence, it is the same as that which applies under the national law. To the extent that indications relating to the deposit of a biological material are not given in the description, because they are furnished later, they may be given in the "optional sheet" provided for that purpose. If the sheet is submitted when the international application is filed, a reference to it should be made in the check list contained on the last sheet of the request form. Should Japan be designated, such a sheet must, if used, be included as one of the sheets of the description at the time of filing; otherwise the indications given in it will not be taken into account by the Japanese Patent Office in the national phase. If the sheet is furnished to the International Bureau later, it must be enclosed with a letter. Each national (or regional) Office whose national law provides for deposits of biological material for the purposes of patent procedure notifies the International Bureau of the depositary institutions with which the national law permits such deposits to be made. Information on the institutions notified by each of those Offices is published by the Inter- national Bureau in the PCT Gazette. A reference to a deposit cannot be disregarded by a des- ignated Office for reasons pertaining to the institution with which the biological material was deposited if the deposit referred to is one made with a depositary institution noti- fied by that Office. Thus, by consulting the PCT Gazette or Annex L of the PCT Applicant's Guide, the applicant can be sure that he has deposited the biological material with an institution which will be accepted by the designated Office. International Searching Authorities and International Preliminary Examining Authorities are not expected to request access to deposited biological material. However, in order to retain the possibility of access to a deposited biological material referred to in an international applica- tion which is being searched or examined by such an Authority, the PCT provides that the Authorities may, if they fulfill certain conditions, ask for samples. Thus, an Authority may only ask for samples if it has notified the International Bureau (in a general notification) that it may require samples and the International Bureau has published the notification in the PCT Gazette. The only Authority which has made such a notification (and thus the only Authority which may request samples) is the Japanese Patent Office. If a sample is asked for, the request is directed to the applicant, who then becomes responsible for making the necessary arrangements for the sample to be provided. The furnishing of samples of a deposit of a biological material to third persons is governed by the national laws applicable in the designated Offices. PCT Rule 13bis.6(b), however, provides for the delaying of any furnishing of samples under the national law applicable in each of the designated (or elected) Offices until the start of the national phase, subject to the ending of this "delaying effect" brought about by the occurrence of either of the following two events: (A) the applicant has, after international publication of the international application, taken the steps necessary to enter the national phase before the designated Office. (B) international publication of the international appli- cation has been effected, and that publication has the same effects, under the national law applicable in the designated Office, as the compulsory national publication of an unex- amined national application (in other words, the interna- tional application has qualified for the grant of "provisional protection"). 1823.02 Nucleotide and/or Amino Acid Sequence Listings [R-1] > PCT Rule < 5. The Description ***** *5.2.Nucleotide and/or Amino Acid Sequence Disclosure (a) Where the international application contains disclosure of one or more nucleotide and/or amino acid sequences, the description shall con- tain a sequence listing complying with the standard prescribed by the Administrative Instructions and presented as a separate part of the descrip- tion in accordance with that standard. (b) Where the sequence listing part of the description contains any free text as defined in the standard provided for in the Administrative Instructions, that free text shall also appear in the main part of the descrip- tion in the language thereof. PCT Rule 13ter. Nucleotide and/or Amino Acid Sequence Listings 13ter.1.Sequence Listing for International Authorities (a) Where the International Searching Authority finds that the inter- national application contains disclosure of one or more nucleotide and/or amino acid sequences but: (i) the international application does not contain a sequence list- ing complying with the standard provided for in the Administrative Instructions, that Authority may invite the applicant to furnish to it, within a time limit fixed in the invitation, a sequence listing complying with that standard; (ii) the applicant has not already furnished a sequence listing in computer readable form complying with the standard provided for in the Administrative Instructions, that Authority may invite the applicant to fur- nish to it, within a time limit fixed in the invitation, a sequence listing in such a form complying with that standard. (b) [Deleted] (c) If the applicant does not comply with an invitation under para- graph (a) within the time limit fixed in the invitation, the International Searching Authority shall not be required to search the international appli- cation to the extent that such noncompliance has the result that a meaning- ful search cannot be carried out. (d) Where the International Searching Authority finds that the description does not comply with Rule 5.2(b), it shall invite the applicant to file the required correction. Rule 26.4 shall apply mutatis mutandis to any correction offered by the applicant. The International Searching Authority shall transmit the correction to the receiving Office and to the International Bureau. (e) Paragraphs (a) and (c) shall apply mutatis mutandis to the proce- dure before the International Preliminary Examining Authority. (f) Any sequence listing not contained in the international applica- tion as filed shall not, subject to Article 34, form part of the international application. 13ter.2.Sequence Listing for Designated Office Once the processing of the international application has started before a designated Office, Rule 13ter .1(a) shall apply mutatis mutandis to the procedure before that Office. No designated Office shall require the appli- cant to furnish to it a sequence listing other than a sequence listing com- plying with the standard provided for in the Administrative Instructions. PCT Administrative Instruction Section 208. Sequence Listings Any nucleotide and/or amino acid sequence listing ("sequence listing") filed as part of the international application, or furnished together with the international application or subsequently (whether in printed form or com- puter readable form), shall comply with Annex C. REQUIREMENTS FOR SEQUENCE LISTINGS Where an international application discloses one or more nucleotide and/or amino acid sequences, the description must contain a sequence listing complying with the stan- dard specified in the Administrative Instructions. The stan- dard is set forth in detail in Annex C - Standard for the Presentation of Nucleotide and Amino Acid Sequence List- ings in International Patent Applications Under the PCT. The standard allows the applicant to draw up a single sequence listing which is acceptable to all receiving Offices, International Searching and Preliminary Examin- ing Authorities for the purposes of the international phase, and to all designated and elected Offices for the purposes of the national phase. The International Searching Authority and the International Preliminary Examining Authority may, in some cases, invite the applicant to furnish a listing complying with that standard. The applicant may also be invited to furnish a listing in a computer readable form pro- vided for in the PCT Administrative Instructions. It is advisable for the applicant to submit a listing of the sequence in computer readable form, if such a listing is required by the competent International Searching Author- ity or International Preliminary Examining Authority, together with the international application rather than to wait for an invitation by the International Searching Authority or International Preliminary Examining Author- ity. The computer readable form is not mandatory in interna- tional applications to be searched by the United States International Searching Authority or examined by the United States International Preliminary Examining Author- ity. However, if a computer readable form of a sequence listing is not provided, a search or examination will be per- formed only to the extent possible in the absence of the computer readable form. The U.S. sequence rules (37 CFR 1.821 - 1.825) and the PCT sequence requirements are sub- stantively consistent. In this regard, full compliance with the requirements of the U.S. rules will ensure compliance with the applicable PCT requirements. The European Patent Office (EPO), since January 1, 1993, requires nucleotide and amino acid sequences to be in com- puter readable form. Applicants should be cognizant of this requirement and ensure compliance with EPO requirements if the EPO is to be the search or examination authority. See also MPEP ? 1848. For a detailed discussion of the U.S. sequence rules, see MPEP ? 2420 - ? 2421.04. 1824 The Claims PCT Article 6. The Claims The claim or claims shall define the matter for which protection is sought. Claims shall be clear and concise. They shall be fully supported by the description. PCT Rule 6. The Claims 6.1.Number and Numbering of Claims (a) The number of the claims shall be reasonable in consideration of the nature of the invention claimed. (b) If there are several claims, they shall be numbered consecutively in Arabic numerals. (c) The method of numbering in the case of the amendment of claims shall be governed by the Administrative Instructions. 6.2.References to Other Parts of the International Application (a) Claims shall not, except where absolutely necessary, rely, in respect of the technical features of the invention, on references to the description or drawings. In particular, they shall not rely on such refer- ences as: "as described in part ... of the description," or "as illustrated in figure ... of the drawings." (b) Where the international application contains drawings, the tech- nical features mentioned in the claims shall preferably be followed by the reference signs relating to such features. When used, the reference signs shall preferably be placed between parentheses. If inclusion of reference signs does not particularly facilitate quicker understanding of a claim, it should not be made. Reference signs may be removed by a designated Office for the purposes of publication by such Office. 6.3.Manner of Claiming (a) The definition of the matter for which protection is sought shall be in terms of the technical features of the invention. (b) Whenever appropriate, claims shall contain: (i) a statement indicating those technical features of the inven- tion which are necessary for the definition of the claimed subject matter but which, in combination, are part of the prior art, (ii) a characterizing portion - preceded by the words "character- ized in that," "characterized by," "wherein the improvement comprises," or any other words to the same effect - stating concisely the technical fea- tures which, in combination with the features stated under (i), it is desired to protect. (c) Where the national law of the designated State does not require the manner of claiming provided for in paragraph (b), failure to use that manner of claiming shall have no effect in that State provided the manner of claiming actually used satisfies the national law of that State. 6.4.Dependent Claims (a) Any claim which includes all the features of one or more other claims (claim in dependent form, hereinafter referred to as "dependent claim") shall do so by a reference, if possible at the beginning, to the other claim or claims and shall then state the additional features claimed. Any dependent claim which refers to more than one other claim ("multiple dependent claim") shall refer to such claims in the alternative only. Multi- ple dependent claims shall not serve as a basis for any other multiple dependent claim. Where the national law of the national Office acting as International Searching Authority does not allow multiple dependent claims to be drafted in a manner different from that provided for in the preceding two sentences, failure to use that manner of claiming may result in an indication under Article 17(2)(b) in the international search report. Failure to use the said manner of claiming shall have no effect in a desig- nated State if the manner of claiming actually used satisfies the national law of that State. (b) Any dependent claim shall be construed as including all the lim- itations contained in the claim to which it refers or, if the dependent claim is a multiple dependent claim, all the limitations contained in the particu- lar claim in relation to which it is considered. (c) All dependent claims referring back to a single previous claim, and all dependent claims referring back to several previous claims, shall be grouped together to the extent and in the most practical way possible. 6.5.Utility Models Any designated State in which the grant of a utility model is sought on the basis of an international application may, instead of Rules 6.1 to 6.4, apply in respect of the matters regulated in those Rules the provisions of its national law concerning utility models once the processing of the inter- national application has started in that State, provided that the applicant shall be allowed at least two months from the expiration of the time limit applicable under Article 22 to adapt his application to the requirements of the said provisions of the national law. PCT Administrative Instruction Section 205. Numbering and Identification of Claims Upon Amendment (a) Amendments to the claims under Article 19 or Article 34(2)(b) may be made either by cancelling one or more entire claims, by adding one or more new claims or by amending the text of one or more of the claims as filed. All the claims appearing on a replacement sheet shall be numbered in Arabic numerals. Where a claim is cancelled, no renumber- ing of the other claims shall be required. In all cases where claims are renumbered, they shall be renumbered consecutively. (b) The applicant shall, in the letter referred to in the second and third sentences of Rule 46.5(a) or in the second and fourth sentences of Rule 66.8(a), indicate the differences between the claims as filed and the claims as amended. He shall, in particular, indicate in the said letter, in connection with each claim appearing in the international application (it being understood that identical indications concerning several claims may be grouped), whether: (i) the claim is unchanged; (ii) the claim is cancelled; (iii) the claim is new; (iv) the claim replaces one or more claims as filed; (v) the claim is the result of the division of a claim as filed. 37 CFR 1.436. The claims. The requirements as to the content and format of claims are set forth in PCT Art. 6 and PCT Rules 6, 9, 10 and 11 and shall be adhered to. The number of the claims shall be reasonable, considering the nature of the invention claimed. The claim or claims must "define the matter for which protection is sought." Claims must be clear and concise. They must be fully supported by the description. PCT Rule 6 contains detailed requirements as to the number and num- bering of claims, the extent to which any claim may refer to other parts of the international application, the manner of claiming, and dependent claims. As to the manner of claiming, the claims must, whenever appropriate, be in two distinct parts; namely, the statement of the prior art and the statement of the features for which protection is sought ("the characterizing portion"). The physical requirements for the claims are the same as those for the description. Note that the claims must com- mence on a new sheet. The procedure for rectification of obvious errors is explained in MPEP ? 1836. The omission of an entire sheet of the claims cannot be rectified without affecting the international filing date. It is recommended that a request for rectification of obvious errors in the claims be made only if the error is liable to affect the international search; otherwise, the rectification should be made by amending the claims. The claims can be amended during the international phase under PCT Article 19 on receipt of the international search report, during international preliminary examination if the applicant has filed a Demand, and during the national phase. Multiple dependent claims are permitted in international applications before the United States Patent and Trademark Office as an International Searching and International Pre- liminary Examining Authority or as a Designated or Elected Office, if they are in the alternative only and do not serve as a basis for any other multiple dependent claim (PCT Rule 6.4(a), 35 U.S.C. 112). The claims, being an element of the application, should start on a new page (PCT Rule 11.4). Page numbers and line numbers must not be placed in the margins (PCT Rule 11.6(e)). The number of claims shall be reasonable, considering the nature of the invention claimed (37 CFR 1.436 ). 1825 The Drawings PCT Article 7. The Drawings (1) Subject to the provisions of paragraph (2)(ii), drawings shall be required when they are necessary for the understanding of the invention. (2) Where, without being necessary for the understanding of the invention, the nature of the invention admits of illustration by drawings: (i) the applicant may include such drawings in the interna- tional application when filed. (ii) any designated Office may require that the applicant file such drawings with it within the prescribed time limit. PCT Rule 7. The Drawings 7.1.Flow Sheets and Diagrams Flow sheets and diagrams are considered drawings. 7.2.Time Limit The time limit referred to in Article 7(2)(ii) shall be reasonable under the circumstances of the case and shall, in no case, be shorter than two months from the date of the written invitation requiring the filing of draw- ings or additional drawings under the said provision. PCT Rule 11. Physical Requirements of the International Application ***** 11.5.Size of Sheets The size of the sheets shall be A4 (29.7 cm x 21 cm). However, any receiving Office may accept international applications on sheets of other sizes provided that the record copy, as transmitted to the International Bureau, and, if the competent International Searching Authority so desires, the search copy, shall be of A4 size. 11.6.Margins ***** (c) On sheets containing drawings, the surface usable shall not exceed 26.2 cm x 17.0 cm. The sheets shall not contain frames around the usable or used surface. The minimum margins shall be as follows: - top: 2.5 cm - left side: 2.5 cm - right side: 1.5 cm - bottom: 1.0 cm ***** 11.11.Words in Drawings (a) The drawings shall not contain text matter, except a single word or words, when absolutely indispensable, such as "water," " steam," "open," "closed," "section on AB," and, in the case of electric circuits and block schematic or flow sheet diagrams, a few short catchwords indispens- able for understanding. (b) Any words used shall be so placed that, if translated, they may be pasted over without interfering with any lines of the drawings. ***** 11.13.Special Requirements for Drawings (a) Drawings shall be executed in durable, black, sufficiently dense and dark, uniformly thick and well-defined, lines and strokes without col- orings. (b) Cross-sections shall be indicated by oblique hatching which should not impede the clear reading of the reference signs and leading lines. (c) The scale of the drawings and the distinctness of their graphical execution shall be such that a photographic reproduction with a linear reduction in size to two-thirds would enable all details to be distinguished without difficulty. (d) When, in exceptional cases, the scale is given on a drawing, it shall be represented graphically. (e) All numbers, letters and reference lines, appearing on the draw- ings, shall be simple and clear. Brackets, circles or inverted commas shall not be used in association with numbers and letters. (f) All lines in the drawings shall, ordinarily, be drawn with the aid of drafting instruments. (g) Each element of each figure shall be in proper proportion to each of the other elements in the figure, except where the use of a different proportion is indispensable for the clarity of the figure. (h) The height of the numbers and letters shall not be less than 0.32 cm. For the lettering of drawings, the Latin and, where customary, the Greek alphabets shall be used. (i) The same sheet of drawings may contain several figures. Where figures on two or more sheets form in effect a single complete figure, the figures on the several sheets shall be so arranged that the complete figure can be assembled without concealing any part of any of the figures appear- ing on the various sheets. (j) The different figures shall be arranged on a sheet or sheets with- out wasting space, preferably in an upright position, clearly separated from one another. Where the figures are not arranged in an upright posi- tion, they shall be presented sideways with the top of the figures at the left side of the sheet. (k) The different figures shall be numbered in Arabic numerals con- secutively and independently of the numbering of the sheets. (l) Reference signs not mentioned in the description shall not appear in the drawings, and vice versa. (m) The same features, when denoted by reference signs, shall, throughout the international application, be denoted by the same signs. (n) If the drawings contain a large number of reference signs, it is strongly recommended to attach a separate sheet listing all reference signs and the features denoted by them. ***** 37 CFR 1.437. The drawings. (a) Subject to paragraph (b) of this section, when drawings are nec- essary for the understanding of the invention, or are mentioned in the description, they must be part of an international application as originally filed in the United States Receiving Office in order to maintain the interna- tional filing date during the national stage (PCT Art. 7). (b) Drawings missing from the application upon filing will be accepted if such drawings are received within 30 days of the date of first receipt of the incomplete papers. If the missing drawings are received within the 30-day period, the international filing date shall be the date on which such drawings are received. If such drawings are not timely received, all references to drawings in the international application shall be considered non-existent (PCT Art. 14(2), Administrative Instruction 310). (c) The physical requirements for drawings are set forth in PCT Rule 11 and shall be adhered to. The international application must contain drawings when they are necessary for the understanding of the inven- tion. Moreover where, without drawings being actually necessary for the understanding of the invention, its nature admits of illustration by drawings, the applicant may include such drawings and any designated Office may require the applicant to file such drawings during the national phase. Flow sheets and diagrams are considered drawings. "Guidelines for Drawings Under the Patent Cooperation Treaty," published in the PCT Gazette (No. 7/ 1978), may be obtained, in English and French, from the International Bureau. Drawings must be presented on one or more separate sheets. They may not be included in the description, the claims or the abstract. They may not contain text matter, except a single word or words when absolutely indispens- able. All lines in the drawings must, ordinarily, be drawn with the aid of a drafting instrument and must be executed in black, uniformly thick and well-defined lines. Rules 11.10 to 11.13 contain detailed requirements as to further physical requirements of drawings. Drawings newly exe- cuted according to national standards may not be required during the national phase if the drawings filed with the international application comply with Rule 11. The exam- iner may require new drawings where the drawings which were accepted during the international phase did not com- ply with PCT Rule 11. A file reference may be indicated in the upper left corner on each sheet of the drawings as for the description. All the figures constituting the drawings must be grouped together on a sheet or sheets without waste of space, preferably in an upright position and clearly sepa- rated from each other. Where the drawings or tables cannot be presented satisfactorily in a