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1857    International Publication [R-08.2012]

PCT Article 21

International Publication

  • (1) The International Bureau shall publish international applications.
  • (2)
    • (a) Subject to the exceptions provided for in subparagraph (b) and in Article 64 (3), the international publication of the international application shall be effected promptly after the expiration of 18 months from the priority date of that application.
    • (b) The applicant may ask the International Bureau to publish his international application any time before the expiration of the time limit referred to in subparagraph (a). The International Bureau shall proceed accordingly, as provided in the Regulations.
  • (3) The international search report or the declaration referred to in Article 17 (2)(a) shall be published as prescribed in the Regulations.
  • (4) The language and form of the international publication and other details are governed by the Regulations.
  • (5) There shall be no international publication if the international application is withdrawn or is considered withdrawn before the technical preparations for publication have been completed.
  • (6) If the international application contains expressions or drawings which, in the opinion of the International Bureau, are contrary to morality or public order, or if, in its opinion, the international application contains disparaging statements as defined in the Regulations, it may omit such expressions drawings, and statements, from its publications, indicating the place and number of words or drawings omitted, and furnishing, upon request, individual copies of the passages omitted.

PCT Article 29

Effects of the International Publication

  • (1) As far as the protection of any rights of the applicant in a designated State is concerned, the effects, in that State, of the international publication of an international application shall, subject to the provisions of paragraphs (2) to (4), be the same as those which the national law of the designated State provides for the compulsory national publication of unexamined national applications as such.
  • (2) If the language in which the international publication has been effected is different from the language in which publications under the national law are effected in the designated State, the said national law may provide that the effects provided for in paragraph (1) shall be applicable only from such time as:
    • (i) a translation into the latter language has been published as provided by the national law, or
    • (ii) a translation into the latter language has been made available to the public, by laying open for public inspection as provided by the national law, or
    • (iii) a translation into the latter language has been transmitted by the applicant to the actual or prospective unauthorized user of the invention claimed in the international application, or
    • (iv) both the acts described in (i) and (iii), or both the acts described in (ii) and (iii), have taken place.
  • (3) The national law of any designated State may provide that, where the international publication has been effected, on the request of the applicant, before the expiration of 18 months from the priority date, the effects provided for in paragraph (1) shall be applicable only from the expiration of 18 months from the priority date.
  • (4) The national law of any designated State may provide that the effects provided for in paragraph (1) shall be applicable only from the date on which a copy of the international application as published under Article 21 has been received in the national Office of or acting for such State. The said Office shall publish the date of receipt in its gazette as soon as possible.

PCT Administrative Instruction Section 404

International Publication Number of International Application

The International Bureau shall assign to each published international application an international publication number which shall be different from the international application number. The international publication number shall be used on the published international application and in the Gazette entry. It shall consist of the two-letter code “WO” followed by a four-digit indication of the year of publication, a slant, and a serial number consisting of six digits (e.g., “WO 2004/123456”).

35 U.S.C. 374  Publication of international application.

The publication under the treaty defined in section 351(a) of this title, of an international application designating the United States shall be deemed a publication under section 122(b) , except as provided in sections 102(e) and 154(d) of this title.

The publication of international applications currently occurs every Thursday. Under PCT Article 20 and PCT Rules 47.1 (a) and 93 bis .1, the International Bureau sends copies of published international applications to each of the designated Offices that have requested to receive such documents on the date specified by that Office. The U.S. Patent and Trademark Office, as a designated Office, has requested the International Bureau to effect communication of the published application on the day of publication. Until October 1, 1995, as a PCT member country, the U.S. Patent and Trademark Office received copies of all published international applications in printed form for inclusion in the examiner search files. The U.S. Patent and Trademark Office now receives the published international applications on CD-ROM disks and in other electronic formats. For information on obtaining copies of these applications, see MPEP § 901.05(c) . Published international application information is also available from the PCT Gazette , which can be accessed electronically through The Intellectual Property Digital Library Web site (http://ipdl.wipo.int/) of the World Intellectual Property Organization. In addition, published international applications may be obtained online from the European Patent Office web site (http://ep.espacenet.com).

  PUBLICATION OF SEQUENCE LISTING AND/OR TABLES FILED IN ELECTRONIC FORM

PCT Administrative Instruction Section 805

Publication and Communication of International Applications Containing Sequence Listings and/or Tables; Copies; Priority Documents

  • (a) Notwithstanding Section 406 , an international application containing sequence listings and/or tables may be published under Article 21 , in whole or in part, in electronic form as determined by the Director General.
  • (b) Paragraph (a) shall apply mutatis mutandis in relation to:
    • (i) the communication of an international application under Article 20 ;
    • (ii) the furnishing of copies of an international application under Rules 87 and 94.1;
    • (iii) the furnishing under Rule 17.1 , as a priority document, of a copy of an international application containing sequence listings and/or tables filed under Section 801 (a);
    • (iv) the furnishing under Rules 17.2 and 66.7 of copies of a priority document.

As of August 2, 2001, WIPO began to publish sequence listing parts of the description on the Internet where the sequence listing was filed under PCT Administrative Instructions Section 801 as authorized by PCT Administrative Instructions Section 805 (a). On September 6, 2002, the PCT Administrative Instructions were further amended to include electronic submissions of tables related to sequence listings. Sequence listing parts of the description and tables may be viewed and downloaded at http://www.wipo.int/pct/en/sequences/index.htm. Thus, an international application containing a sequence listing or table filed under Part 8 of the Administrative Instructions comprises two elements published on the same day:

  • (A) a first element including all parts of the application that were not filed in electronic format under Part 8 of the Administrative Instructions; and
  • (B) a second element consisting of an electronic publication of the sequence listing and/or tables that were filed in electronic format under Part 8 of the Administrative Instructions.

Cross-references between the two elements are included for the sake of clarity. The bibliographic page of a published international application filed under Administrative Instructions Section 801 includes the statement: “Published with sequence listing part of description published separately in electronic form and available upon request from the International Bureau.” Conversely, the electronic publication of the sequence listing part of the international application on WIPO’s web site (www.wipo.int/pct/en/sequences/index.htm) contains a link to the remainder of the published international application in the electronic PCT Gazette .

1857.01   Prior Art Effect of the International Publication [R-08.2012]

35 U.S.C. 374  Publication of international application.

The publication under the treaty defined in section 351(a) of this title, of an international application designating the United States shall be deemed a publication under section 122(b) , except as provided in sections 102(e) and 154(d) of this title.

35 U.S.C. 102  Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless —

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  • (e) the invention was described in — (1) an application for patent, published under section 122(b) , by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or

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An international application may be used as prior art as of its international filing date, or an earlier U.S. filing date for which benefit is properly claimed, under 35 U.S.C. 102 (e) if the international application:

  • (A) was filed on or after November 29, 2000;
  • (B) designated the United States; and
  • (C) was published under PCT Article 21 (2) in the English language.

If such an international application properly claims benefit under 35 U.S.C. 119 (e), 120 , or 365 (c) to an earlier-filed U.S. national or international application designating the U.S. , the international application can be applied as prior art under 35 U.S.C. 102 (e) as of the earlier filing date, assuming all the conditions of 35 U.S.C. 102 (e), 119 (e), 120 , or 365 (c) are met. Note, where the earlier application is also an international application, the earlier international application must satisfy the same three conditions (i.e., filed on or after November 29, 2000, designated the U.S. and had been published in English under PCT Article 21 (2)) for the earlier international filing date to be a U.S. filing date for prior art purposes under 35 U.S.C. 102 (e).

If any of the above conditions have not been satisfied, the publication of the international application and the U.S. application publication of the national stage after compliance with 35 U.S.C. 371 may only be used as prior art as of its publication date under 35 U.S.C. 102 (a) or (b). See MPEP § 706.02(a) and § 2136.03 . A later filed U.S. application that properly claimed the benefit under 35 U.S.C. 120 or 365 (c) of such an international application will have its own U.S. filing date for purposes of 35 U.S.C. 102 (e). In addition, international applications, which: (1) were filed prior to November 29, 2000, (2) did not designate the U.S., or (3) were not published in English under PCT Article 21 (2) by WIPO, may not be used to reach back (bridge) to an earlier filing date through a benefit claim for prior art purposes under 35 U.S.C. 102 (e).

For more information, see MPEP § 706.02(a) and § 706.02(f)(1).

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Last Modified: 03/27/2014 10:10:33