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1865    Filing of Demand [R-08.2012]

PCT Article 31

Demand for International Preliminary Examination

  • (1) On the demand of the applicant, his international application shall be the subject of an international preliminary examination as provided in the following provisions and the Regulations.

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  • (3) The demand for international preliminary examination shall be made separately from the international application. The demand shall contain the prescribed particulars and shall be in the prescribed language and form.

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  • (6)
    • (a) The demand shall be submitted to the competent International Preliminary Examining Authority referred to in Article 32 .

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Applicants should submit the Demand and appropriate fees directly to the International Preliminary Examining Authority (IPEA) they desire to prepare the International Preliminary Examination Report. United States applicants who have had the international search prepared by the European Patent Office (EPO) may request the EPO to act as the IPEA with some exceptions. See MPEP § 1865.01 .

Demands filed in the European Patent Office should be delivered to the European Patent Office Headquarters at Munich:

Location:

Erhardstr. 27
D-80331 Munchen
Germany

Mailing address:

D-80298 Munchen
Germany

United States applicants may also request the Korean Intellectual Property Office (KIPO) to act as the IPEA. Demands filed in the KIPO should be delivered to the KIPO Headquarters:

Location and mailing address:

920 Dunsan-dong
Seo-gu, Daejeon Metropolitan City 302-701
Republic of Korea

Demands filed in the United States Patent and Trademark Office (USPTO) should be addressed as follows:

Mailing address for delivery by the U.S. Postal Service:

Mail Stop PCT
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450.

OR

If hand-carried directly to the USPTO:

Customer Service Window, Mail Stop PCT
Randolph Building
401 Dulany Street
Alexandria, VA 22314

The “Express Mail” provisions of 37 CFR 1.10 may be used to file a Demand under Chapter II in the USPTO. Applicants are advised that failure to comply with the provisions of 37 CFR 1.10 will result in the paper or fee being accorded the date of receipt and not the date of deposit. See MPEP § 513 .

Demand for international preliminary examination may also be submitted to the USPTO via internet (EFS-Web) or facsimile. The Certificate of Mailing or Transmission practice under 37 CFR 1.8 CANNOT be used to file a Demand if the date of deposit is desired. If used, the date of the Demand will be the date of receipt in the USPTO. See MPEP § 513 , § 1834 , and § 1834.01 .

All Demands filed in the USPTO must be in the English language.

PCT Rule 59.3 was amended July 1, 1998 to provide a safeguard in the case of a Demand filed with an International Preliminary Examining Authority which is not competent for the international preliminary examination of a particular international application. The USPTO will forward such a Demand to the International Bureau and the International Bureau will forward the Demand to a competent International Preliminary Examining Authority pursuant to PCT Rule 59.3(c) . The competent International Preliminary Examining Authority will process the Demand based on the date of receipt in the USPTO. See 37 CFR 1.416(c) (2).

  CHOICE OF EXAMINING AUTHORITY

For most applications, U.S. residents and nationals may choose to have the international preliminary examination done by the EPO if the EPO served as the International Searching Authority (ISA). However, for certain applications including one or more claims directed to the field of biotechnology, the field of business methods or the field of telecommunication, the EPO will not act as a competent IPEA. See MPEP § 1865.01 .

U.S. residents and nationals may also choose to have the international preliminary examination done by the KIPO.

The IPEA/US will serve as International Preliminary Examining Authority for U.S. residents and nationals if the U.S. , EPO , or KIPO served as ISA and the international application was filed in the U.S. Receiving Office or the International Bureau as receiving Office.

The IPEA/US will also serve as International Preliminary Examining Authority for residents or nationals of Barbados, Brazil, Egypt, India, Israel, Mexico, New Zealand, the Philippines, Saint Lucia, South Africa, and Trinidad and Tobago if the U.S. was the International Searching Authority.

Form PCT/IPEA/401
Form PCT/IPEA/401 (Second Sheet)
Form PCT/IPEA/401 (last sheet)
Form PCT/IPEA/401 Fee Calculation Sheet

1865.01   The European Patent Office as an International Preliminary Examining Authority [R-08.2012]

The European Patent Office (EPO) has expressed the following limitations concerning its competency to act as an International Preliminary Examining Authority (IPEA). For updates or possible changes to these limitations, applicants should consult the PCT Newsletter which is available in electronic form from the web site (www.wipo.int/pct/en/newslett/) of the World Intellectual Property Organization.

I.   FIELD OF BIOTECHNOLOGY

The EPO is not a competent authority within the meaning of PCT Article 16 (3)(b) and PCT Article 32 (3), and will not carry out international preliminary examination in respect of any international application filed before January 1, 2004, where the corresponding demand was filed with the EPO on or after March 1, 2002, if the application: (A) was filed with the USPTO as receiving Office by a national or resident of the U.S.; or (B) was filed in the International Bureau (IB) as receiving Office by a national or resident of the U.S. (provided the application did not also identify as an applicant at its time of filing a national or resident of a European Patent Convention (EPC) Contracting State); where the application contains one or more claims relating to the field of biotechnology as defined by the following units of the International Patent Classification:

C12M Apparatus for enzymology or microbiology
C12N Micro-organisms or enzymes; compositions thereof
C12P Fermentation or enzyme-using processes to synthesise a desired chemical compound or composition or to separate optical isomers from a racemic mixture
C12Q Measuring or testing processes involving enzymes or micro-organisms; compositions or test papers therefor; processes of preparing such compositions; condition-responsive control in microbiological or enzymological processes
C07K Peptides
G01N 33/50 (including subdivisions) Chemical analysis of biological material, e.g. blood, urine; testing involving biospecific ligand binding methods; immunological testing
A61K 39 Medicinal preparations containing antigens or antibodies
A61K 48 Medicinal preparations containing genetic material which is inserted into cells of the living body to treat genetic diseases; Gene therapy
A01H New plants or processes for obtaining them; plant reproduction by tissue culture techniques

For information, U.S. classes covering the corresponding subject matter are listed below:

424 Drug, bio-affecting and body treating compositions
435 Chemistry: molecular biology and microbiology
436 Chemistry: analytical and immunological testing
514 Drug, bio-affecting and body treating compositions
530 Chemistry: natural resins or derivatives; peptides or proteins; lignins or reaction products thereof
536 Organic compounds–part of the class 532-570 series
800 Multicellular living organisms and unmodified parts thereof
930 Peptide or protein sequence

II.   FIELD OF BUSINESS METHODS

The EPO is not a competent authority within the meaning of PCT Article 16 (3)(b) and PCT Article 32 (3), and will not carry out international preliminary examination in respect of any international application where the corresponding demand was filed with the EPO on or after March 1, 2002, if the application: (A) is filed with the USPTO as receiving Office by a national or resident of the U.S.; or (B) is filed in the IB as receiving Office by a national or resident of the U.S. (provided the application does not also identify as an applicant at its time of filing a national or resident of an EPC Contracting State); where the application contains one or more claims relating to the field of business methods as defined by the following units of the International Patent Classification:

G06Q Data processing systems or methods, specially adapted for administrative, commercial, financial, managerial, supervisory or forecasting purposes; systems or methods specially adapted for administrative, commercial, financial, managerial, supervisory or forecasting purposes, not otherwise provided for
G06Q 10/00 Administration, e.g., office automation or reservations; Management, e.g., resource or project management
G06Q 30/00 Commerce, e.g., marketing, shopping, billing, auctions or e-commerce
G06Q 40/00 Finance, e.g., banking, investment or tax processing; Insurance, e.g., risk analysis or pensions
G06Q 50/00 Systems or methods specially adapted for a specific business sector, e.g., health care, utilities, tourism or legal services
G06Q 90/00 Systems or methods specially adapted for administrative, commercial, financial, managerial, supervisory or forecasting purposes, not involving significant data processing
G06Q 99/00 Subject matter not provided for in other groups of this subclass.

For information, the U.S. class covering the corresponding subject matter is listed below:

705 Data processing: financial, business practice, management, or cost/price determination

III.   FIELD OF TELECOMMUNICATION

The EPO is not a competent authority within the meaning of PCT Article 16 (3)(b) and PCT Article 32 (3), and will not carry out international preliminary examination in respect of any international application where the corresponding demand is filed with the EPO on or after March 1, 2002, and before July 1, 2004, where the application: (A) is filed with the USPTO as receiving Office by a national or resident of the U.S.; or (B) is filed in the IB as receiving Office by a national or resident of the U.S. (provided the application does not also identify as an applicant at its time of filing a national or resident of an EPC Contracting State); where the application contains one or more claims relating to the field of telecommunication as defined by the following unit of the International Patent Classification:

H04 Electric communication technique with the exception of H04N: Pictorial communication, e.g. television

For information, the U.S. classes covering the corresponding subject matter are listed below:

370 Multiplex communications
375 Pulse or digital communications
379 Telephonic communication
380 Cryptography
381 Electrical audio signal processing systems and devices
455

Telecommunications

Demands for international preliminary examination submitted to a non-competent authority are subject to PCT Rule 59.3 . Applicants filing demands with the EPO in applications directed to the above subject matter will receive a notice from the EPO indicating that the demand is being forwarded to the IPEA/US under PCT Rule 59.3 (f). Any fees paid by the applicant to the EPO will be refunded to the applicant. Applicants have one month from the date of receipt of the demand transmitted to the IPEA under PCT Rule 59.3 to pay the handling fee (PCT Rule 57 and 37 CFR 1.482 (b)) and the preliminary examination fee (PCT Rule 58 and 37 CFR 1.482 (a)). See PCT Rules 57.3 and 58.1 (b).

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