Q) PCT (MPEP 1800, Missing Parts)

by patentbar on May 8, 2007 · 40 comments

in Exam Questions

Test takers report that MPEP Chapter 1800, PCT, is tested heavily on the Prometric Patent Bar Exam. Experiencing 3-4 questions on this topic is common and some test takers report as many as 10-15 questions (most likely some are beta questions).

Missing Parts

If a PCT application is not complete the applicant has 30 days to submit any missing parts.

Question 1 –

One test taker reported a PCT question with two missing parts of the specification. The applicant filed the missing parts at two intervals. Answer – there are only 30 days to do submit the missing parts, and the applicant’s 2nd submission was not timely.

Question 2 –

One test taker reported a question regarding what to do if there are no claims in a PCT application and that PCT application claims the benefit of a provisional application. How can these claims be sent to the USPTO? The options are to send the claims by facsimile, by express mail, by certificate of mailing, and two others that were off-the-wall answers. Answer – The office will alert you that you have no claims. (You don’t have a filing date at this point, but it doesn’t matter for this question.) According to the MPEP, you can’t use a certificate of mailing for PCT. You can use a fax as long as you’re not submitting documents to enter the national stage of an application. This test taker put facsimile, which might be incorrect since you use express mail to get a filing date. Maybe someone else can help me out?

Regarding the PCT without claims, it looks like you have no international filing date due to absence of the claims. If you submit them via express mail, you get “date in.” If you send them via COM or fax you get date of receipt by PTO.

{ 40 comments… read them below or add one }

1 patentbarNo Gravatar December 20, 2007 at 5:00 am

Consult PCT Rule 20.2 for more details about the time limits for various situations.

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2 NooneNo Gravatar January 25, 2008 at 1:22 am

For Question 2):
You cannot submit an international application by fax (1834.01 (c)). I assume this means missing parts as well. You can use Express mail to get the mailing date as your FD. You cannot use a certificate of mailing. This is all included in 1834

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3 mmmNo Gravatar May 17, 2008 at 3:43 am

Regarding question 2: I think the question is a bit ambiguous, but the gist is that you can’t use COM or COT to obtain a priority date, and so that would not be available.

37 CFR 1.8 (a)(2) states that a COM or COT cannot be used for:

(D) The filing of an international application for patent;
(E) The filing of correspondence in an international application before the U.S. Receiving Office, the U.S. International Searching Authority, or the U.S. International Preliminary Examining Authority;
(F) The filing of a copy of the international application
and the basic national fee necessary to enter the national stage, as specified in § 1.495(b).

Moreover, 1.6(d) clearly states that:

Facsimile transmissions
are not permitted and, if submitted, will not be accorded a date of receipt in the following situations:
***
(3) Correspondence which cannot receive the benefit of the certificate of mailing or transmission as specified in § 1.8(a)(2)(i)(A) through (D) and (F), and § 1.8(a)(2)(iii)(A), except that a continued prosecution
application under § 1.53(d) may be transmitted to the Office by facsimile;

The MPEP further describes those things that a COT can be used for (1834.01 Use of Telegraph, Teleprinter, Facsimile Machine [R-1]):

Facsimile transmission may be used to submit substitute sheets (other than drawings), extensions of time, power of attorney, fee authorizations (other than the basic national fee), confirmation of precautionary designations, Demands, response to written opinions, oaths or declarations, petitions, and translations in international applications.

None of those read like you can use it to file missing parts.

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4 Chris R.No Gravatar July 14, 2010 at 3:08 pm

TO BE CLEAR–
You CAN file the notice of missing parts via First Class mail with or without a Certficate of Transmission and recieve a filing date as of the DATE RECIEVED by the Office. The PCT and Rule 1.8 do not allow for a Certificate of Transmission “deposit” date to be recorded as the filing date. But you can use it to obtain a filing date, it’s just that you are “taking your chances” that it won’t get lost in the mail, etc… Compliance with Rule 1.10 (express mail) does allow for date of deposit as filing date.
The Office will not accept applications (or in this case, an essential part of an item necessary for recording a filing date) via fax. No filing date will be recieved whether a certificate of transmission is used or not.

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5 mmmNo Gravatar May 17, 2008 at 4:46 am

Here’s a related question from a previous exam:

On October 1, 2002, a patent attorney registered to practice before the USPTO filed an international application on behalf of her client in the United States Receiving Office, designating a number of member states, including the United States. Between October 1, 2002 and April 1, 2005, the patent attorney paid all requisite fees and complied with all other requirements to maintain the pendency of the international application. On April 1, 2005, the inventor instructed the patent attorney to take the steps necessary to have the international application enter the national stage in the USPTO. In response to that instruction, the patent attorney transmitted a letter to the USPTO requesting the USPTO to charge the attorney’s deposit account (which had more than adequate funds) to cover the requisite filing fee to enter the national stage. The attorney’s letter was transmitted to the USPTO in two ways. First, it was transmitted via facsimile shortly before noon on April 1, 2005, along with a certificate signed by the person who transmitted the letter, stating the date of transmission. In addition, the letter was sent to the USPTO via first class U.S. Mail, shortly after noon on April 1, 2005, along with a certificate signed by the person who mailed the letter, stating the date of mailing. The facsimile transmission was received at the USPTO at noon on April 1, 2005. The mailed copy was received at the USPTO on April 5, 2005. Which of the following statements is most correct?

(A) The international application entered the national stage in the USPTO on April 1, 2005, because of the faxed letter and certificate of transmission.

(B) The International Application effectively entered the national stage in the USPTO on April 1, 2005, because of the mailed letter and certificate of mailing.

(C) Both A. and B. are correct.

(D) The International Application went abandoned at midnight on April 1, 2005, because of the applicant’s failure to file a copy of the oath or declaration required by 37 CFR §1.371(c)(4) to enter the national stage in the USPTO.

(E) The International Application went abandoned at midnight on April 1, 2005, because of the applicant’s failure to file the filing fee required to enter the national stage in the USPTO.

The correct answer is (E). See 37 CFR §§1.6(d) and 1.8(a)(2)(i)(F), and MPEP §1893.01(a)(1).

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6 KINGKHANNo Gravatar July 14, 2010 at 9:28 pm

WHAT EXAM DATE IS THIS FROM? THANKS

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7 patentbarNo Gravatar September 4, 2008 at 3:52 pm

Also on the Exam – What may be done if a page or pages of drawings have been inadvertently omitted from an international application?

MPEP 1810. The applicant should submit the drawings within the 1 month time limit set by the RO, and before 12 months from any priority date if that date is earlier.

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8 VinayakNo Gravatar June 11, 2009 at 7:36 pm

MPEP 1834-III says clearly that express mail has to be used for sending materials like request, description, claims, abstract, drawings, and other papers.

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9 ChrisNo Gravatar July 14, 2010 at 3:14 pm

Not accurate-

You can use first-class mail and the above items will recieve a filing date as of the date recieved by office.

You cannot use rule1.8 a certificate of mailing to obtain a filing date as of the date of deposit. You can only use the express mail rule 1.10 procedure to recieve a date of filing the same as the date of deposit/mailing.

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10 maggieNo Gravatar October 19, 2011 at 9:22 pm

Thank you this was very helpful: 1834

III. < FILING OF CORRESPONDENCE BY MAIL

The "Express Mail" procedure set forth at 37 CFR 1.10 applies to papers filed with the U.S. Patent and Trademark Office (USPTO) in international applications. Accordingly, papers filed with the USPTO in international applications will be accorded by the USPTO the date of deposit with the United States Postal Service as shown on the "date-in" on the "Express Mail" mailing label as the date of filing in the USPTO if the provisions of 37 CFR 1.10 are complied with. See MPEP § 513.

If there is a question regarding the date of deposit, the Express Mail provisions of 37 CFR 1.10(c)-(e) require, in addition to using the "Express Mail Post Office to Addressee" service, an indication of the "Express Mail" mailing label number on each paper or fee. In situations wherein the correspondence includes several papers directed to the same application (for example, Request, description, claims, abstract, drawings, and other papers) the correspondence may be submitted with a cover or transmittal letter, which should itemize the papers. The cover or transmittal letter must have the "Express Mail" mailing label number thereon.

The certificate of mailing by first class mail procedure set forth at 37 CFR 1.8 differs from the 37 CFR 1.10 Express Mail procedure. See 37 CFR 1.8(a) (2)(i)(D) and (E). It is important to understand that the 37 CFR 1.8 certificate of mailing procedure CANNOT be used for filing any papers during the international stage if the date of deposit is desired. If the 37 CFR 1.8 certificate of mailing procedure is used, the paper and/or fee will be accorded the date of receipt in the USPTO unless the receipt date falls on a Saturday, Sunday, or Federal 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)(1)). Accordingly, the certificate of mailing procedures of 37 CFR 1.8 are not available to have a submission during the international stage considered as timely filed if the submission is not physically received at the USPTO on or before the due date.

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11 Art WilliamsNo Gravatar August 26, 2009 at 10:10 am

With regard to MPEP 1810 and the time allowed to supply missing parts, isn’t it true that 1810 discusses only fees? Doesn’t Rule 7.2 indicate that the deadline for drawings is two months? Doesn’t Rule 20.7 say that a two-months period is allowed for missing parts other than fees?

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12 BigBadVoodoDaddyNo Gravatar June 26, 2011 at 11:45 pm

Rule 20.7 is the one. You are correct – it is within 2 mos. And to be clear, if the missing part affects filing date – the date the missin part is received is the filing date.
It is not 30 days or one month as stated elsewhere here.

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13 BobNo Gravatar March 1, 2010 at 1:51 pm

I agree with Art. I can’t seem to find a reference that says that missing part need to be submitted within 30 days. It seems like there is a two month time window.

Does anyone have a reference that says differently?

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14 JBagNo Gravatar March 11, 2010 at 11:56 pm

Art,

It seems to me that you are not using MPEP 8th Edition Rev. 4. For 8th Edition Rev. 4, it states in rule 20.6:

20.6 Invitation to Correct
(a)
The invitation to correct under Article 11(2) shall specify the requirement provided for under Article 11(1) which, in the opinion of the receiving Office, has not been fulfilled.
(b)
The receiving Office shall promptly mail the invitation to the applicant and shall fix a time limit, reasonable under the circumstances of the case, for filing the correction. The time limit shall not be less than 10 days, and shall not exceed one month, from the date of the invitation. If such time limit expires after the expiration of one year from the filing date of any application whose priority is claimed, the receiving Office may call this circumstance to the attention of the applicant.

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15 JBagNo Gravatar March 12, 2010 at 12:11 am

Also refer to CFR 1.437 in the 8th Edition Rev 4 version.

§ 1.437 The drawings.
(a)
Subject to paragraph (b) of this section, when drawings are necessary 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 international 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.

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16 Sarah W.No Gravatar May 5, 2011 at 5:24 pm

From what I understand now, the new test is going to involve a 2 month period to replace missing parts in an international application. Am I getting that right?

Just want to update this so anyone who is yet to take the exam doesn’t memorize incorrect facts.

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17 Sarah W.No Gravatar May 5, 2011 at 6:05 pm

The new rule is PCT rule 20.7.

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18 BigBadVoodoDaddyNo Gravatar June 26, 2011 at 11:46 pm

yes that is correct

19 zaoNo Gravatar June 11, 2011 at 7:09 pm

where did you find 20.7 rule? From what i understand, you have 2 months for certain things like oath or declaration, translation, search fee (37 CFR 1.492(b)), examination fee (37 CFR 1.492(c)), or application size fee. I don’t think it includes drawings. Any input?

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20 BobNo Gravatar June 11, 2011 at 10:46 pm

All the PCT rules are in Appendix T.

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21 BigBadVoodoDaddyNo Gravatar June 26, 2011 at 11:48 pm

i wish there was a way to flag and remove faulty comments like some above (not you Bob). There is too much faulty information which can be confusing and misleading

22 LevinNo Gravatar June 30, 2012 at 11:20 pm

Appendix T lists PCT Articles and not PCT Rules. PCT Articles are different from PCT Rules. I found PCT Rules on the WIPO website. Can’t find them in the MPEP index.

http://www.wipo.int/pct/en/texts/rules/

23 TJNo Gravatar December 10, 2012 at 3:13 pm

Appendix T lists PCT Articles first, then PCT Rules (starting at T-27 in e8r9).

24 maggieNo Gravatar October 19, 2011 at 2:11 am

It does include drawings

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25 AxoNo Gravatar June 29, 2011 at 11:20 am

Got this one 6/28/11

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26 sgwNo Gravatar July 13, 2011 at 2:47 am

I got similar question on 6/2. I reviewed questions at USPTO.
Missing parts in my question was drawings.

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27 DanielNo Gravatar August 3, 2011 at 11:04 am

Got a variant of Q2 on 7/29/2011. Well, two really. One wanted to know the priority date based on fact pattern similar to the above and one was a thorny question about when the 102(e) date was, but it hadn’t crossed the 11/29/2000 barrier and didn’t have one.

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28 maggieNo Gravatar September 14, 2011 at 3:31 am

Humm Relying on MPEP Appendix T – Patent Cooperation Treaty I think will lead you to the wrong answer. It is simply not comprehensive enough to cover the nuances of the MPEP being tested in most PCT questions.

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29 maggieNo Gravatar October 18, 2011 at 5:59 pm

Is “30 days” stated above for Q1 PCT Missing Parts (Oath/Translation) is a correct statement for current MPEP e8?? I think is might be incorrect?

1893.01(e) Oath/Declaration
Applicants entering the national stage in the U.S. are required to file an oath. If the basic national fee and copy of the international application has been received by the expiration of 30 months from the priority date, but the required oath or declaration has not been filed, the Office will send applicant a Notification of Missing Requirements (Form PCT/DO/EO/905) setting a time period to correct any missing or defective requirements and to submit the surcharge fee required under 37 CFR 1.492(h) unless previously paid.

The time period is 32 MONTHS from the priority date or 2 MONTHS from the date of the notice, whichever expires LATER (same time period for defective or no translation MPEP 1893.01(d)) . The time period may be extended for up to five additional months as provided in 37 CFR 1.136(a).

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30 maggieNo Gravatar October 18, 2011 at 6:08 pm

Furthermore missing Abstract for PCT:
“Where the receiving Office finds that the abstract is missing, it invites the applicant to furnish it within a time limit fixed in the invitation.”

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31 SoBeNo Gravatar October 18, 2011 at 8:29 pm

The previous posts are all over the place. Please correct me if i’m wrong.
Yes, I believe you are correct in that ““30 days” stated above for Q1 PCT Missing Parts” is no longer valid, it is now 2 month rule. However, Oath/Dec is not a requirement for obtaining IA filing date under the PCT, i.e., Oath/Dec is not considered a “Missing Part” according to Article 11, and a missing oath/dec is not considered a defect under Arcticle 14 of the PCT. Article 11 requires, among other things,
(iii) the international application contains at least the following elements:
(a) an indication that it is intended as an international application,
(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.
Defects under Article 11 are explained by Rule 20.3 and Missing Parts are explained by Rule 20.5, both generally have a time limit of 2 months explained in Rule 20.7. Oath/Dec comes into play upon entering national stage and is governed by the MPEP section you posted above. Keeping in mind, “If entry into the U.S. national phase is desired, inventors must be indicated as applicants at least for purposes of the United States.” MPEP 1817.01

As for missing abstract, this IS considered a defect under Article 14 and the relevant PCT rules are 38.1, 38.2, and 38.3. I’ve paraphrased in my own words below, probably best to read original rules too.

Rule 38
Missing or Defective Abstract

38.1 Lack of Abstract
If IA doesn’t have abstract and RO snitches on you to the ISA that it (RO) has already told you to fix this defect, then ISA just keeps on doing whatever it is they do until they hear that your app is considered withdrawn.

38.2 Establishment of Abstract
1.) If your IA doesn’t have abstract, and RO does NOT snitch on you, i.e., ISA doesn’t get word that RO told you to fix this defect, OR
2.) ISA comes to find out that your abstract is crap (doesn’t comply with Rule 8)

THEN=> ISA drafts up an Abstract for you (convenient)

38.3 Modification of Abstract
Whether you wrote the Abstract or the ISA, you have ONE MONTH from the mailing date of the ISR to propose modifications and comments. And the punchline….It’s up to the ISA whether or not to take your wonderful mods and comments into consideration. If they do, they’ll notify the IB.

32 maggieNo Gravatar October 18, 2011 at 9:23 pm

Hi Thank you for your response. Where did you find the 30 days in the MPEP? I cannot find?

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33 maggieNo Gravatar October 18, 2011 at 9:25 pm

Oh sorry miss read that is no longer the rule. I got it!! Thank you!

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34 maggieNo Gravatar October 19, 2011 at 2:08 am

Ok Thank you found it! Missing parts to complete an be given an International Filing Date only

Regulations under the PCT
Rule 20
International Filing Date
20.7 Time Limit
Where an invitation under Rule 20.3(a)”Missing Parts” or 20.5(a)”Defective”, as applicable, was sent to the applicant, two months from the date of the invitation;

35 KerstinNo Gravatar October 23, 2011 at 1:42 pm

Help me out here…What does COT stand for. I figured out that COM was certificate of mailing…..10 days to go…..

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36 KerstinNo Gravatar October 23, 2011 at 1:43 pm

oh…got it now Certificate of Transmission. Brain is full.

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37 geoffNo Gravatar November 9, 2012 at 2:01 pm

Rule 20.5 deals with missing parts as referred to in 20.7 (http://www.wipo.int/pct/en/texts/rules/r20.htm#_20_6_a)

20.7 Time Limit

(a) The applicable time limit referred to in Rules 20.3(a) and (b), 20.4, 20.5(a), (b) and (c), and 20.6(a) shall be:

(i) where an invitation under Rule 20.3(a) or 20.5(a), as applicable, was sent to the applicant, two months from the date of the invitation;

(ii) where no such invitation was sent to the applicant, two months from the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office.

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38 TimsvagNo Gravatar February 14, 2013 at 1:43 pm

Had one question on 02/12/13: A PCT is filed in USPTO. It’s missing a drawing, but the drawing is properly supported by the spec. When is the latest applicant can submit drawing and maintain same filing date?

Sorry, it was something like that. I don’t remember the answer choices but I think I picked no one of the above. One answer choice was within 30 days.

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39 DCNo Gravatar February 27, 2013 at 5:35 pm

02/27/13: Had questions on PCT missing parts today.

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40 TheHumanFamilyNo Gravatar January 8, 2014 at 12:27 pm

Had this one yesterday. Missing 2 pp of drawings in Specification in PCT International Application (wherein the drawings were sufficiently described in the remainder of the spec). I said ‘May submit them in 30 days.” Passed.

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