Q) International Search Reports – PCT (MPEP 1800)

by patentbar on May 13, 2007 · 19 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).

International Search Reports

Chapter I –

If you want a Chapter I international search report (and written opinion for applications filed after Jan 01, 2004), you must “establish” it before either 3 months from receipt by the ISA of the search copy (generated by the office in which the PCT application was filed), or 9 months from the earliest priority date, whichever is later.

 

Chapter II –

If you want to demand a Chapter II search, you must do so before i) if the IA is filed on or after 1/1/04, either 3 months from the transmittal of the international search or 22 months from the priority date, whichever is later; or ii) if the IA is filed before 1/1/04, 19 months from the priority date.


Question 1 –

A test taker reports a question based on how you can reply after receiving an International Search Report.  The answer is you must reply within one month and the ISA is not obligated to give any sort of reply.

{ 19 comments… read them below or add one }

1 passthepatentbarNo Gravatar May 22, 2009 at 12:48 pm

MPEP Section 1842 has a nice flow chart of the PCT process followed by a summary of the deadlines. Knowing where this is can save a lot of time.

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2 mdavis68No Gravatar January 25, 2010 at 9:38 pm
3 samboNo Gravatar September 12, 2009 at 10:22 am

Got Chapter I, ISA search reports Q. Yesterday

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4 Art WilliamsNo Gravatar September 29, 2009 at 3:14 pm

The passage below from MPEP 1845.01 says the time allowed to respond to the international search report is 3 months.

X. TIME TO REPLY
If, in response to the written opinion of the International Searching Authority (Form PCT/ISA/237), applicant wishes to file a demand and amendments and/or arguments, the time period for response is 3 months from the mailing of the international search report and the written opinion or before the expiration of 22 months from the priority date, whichever expires later.

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5 Min009No Gravatar December 2, 2009 at 9:24 pm

After reading various pertinent sections of the PCT chapter, it seems the MPEP misplaced section IX referred to above by Art Williams.

In conclusion, the time limits are ‘before the later of 2/16’ for amendments under Article 19 months (Chapter I related, International Search Report and Written Opinion), and ‘before later or 3/22 months’ for amendments under Article 34 (Chapter II related, IPEA).

before later of 2/16 = before later of 2 months from transmittal of International Search Report to International Bureau OR 16 months from earliest priority date

before later of 3/22 = before later of 3 months from transmittal of International Search Report to International Bureau OR 22 months from earliest priority date

Article 19 (Chapter I) amendments – can only amend claims

Article 34 (if elected optional Chapter II) – can amend claims, drawings and description

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6 Min009No Gravatar December 2, 2009 at 9:25 pm

Fixing ‘months’ misplacement above (after Article 19):

After reading various pertinent sections of the PCT chapter, it seems the MPEP misplaced section IX referred to above by Art Williams.

In conclusion, the time limits are ‘before the later of 2/16 months’ for amendments under Article 19 (Chapter I related, International Search Report and Written Opinion), and ‘before later or 3/22 months’ for amendments under Article 34 (Chapter II related, IPEA).

before later of 2/16 = before later of 2 months from transmittal of International Search Report to International Bureau OR 16 months from earliest priority date

before later of 3/22 = before later of 3 months from transmittal of International Search Report to International Bureau OR 22 months from earliest priority date

Article 19 amendments – can only amend claims
Article 34 (if elected optional Chapter II) – can amend claims, drawings and description

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7 sethzNo Gravatar January 17, 2010 at 6:11 pm

Hi, Min009. I partially agree with you.

About Amendment under PCT art 19 (chapter I). PCT Rule 46 states 2/16, while 1845.01 IX states 3/22. I agree with you here MPEP might misplace section IX.

About Amendment under PCT art 34 (chapter II). There is no statement about 3/22, check MPEP 1864.01 and 37 CFR 1.485 (copy/paste below). If any find a quotes about 3/22 for amendment under art 34, please advice.

Also, the original post is actually dealing with DEMAND for international preliminary examination (chapter II). That states in MPEP 1842 V.A. (also 3/22)

related quotes:

1842 Basic Flow Under the PCT
V. DEADLINE FOR FILING THE DEMAND
A. International Applications Having a Filing Date On or After January 1, 2004
International preliminary examination is optional, but if a demand for international preliminary examination is filed in an international application having an international filing date on or after January 1, 2004, it must be filed prior to the expiration of whichever of the following periods expires later: (A) three months from the date of transmittal to the applicant of the international search report and the written opinion; or (B) 22 months from the priority date.

1845.01 IX. TIME TO REPLY “If, in response to the written opinion of the International Searching Authority (Form PCT/ISA/237), applicant wishes to file a demand and amendments and/or arguments, the time period for response is 3 months from the mailing of the international search report and the written opinion or before the expiration of 22 months from the priority date, whichever expires later.”

1853 Amendment Under PCT Article 19
PCT Article 19. Amendment of the Claims before the International Bureau
The applicant shall, after having received the international search report, be entitled to one opportunity to amend the claims of the international application by filing amendments with the International Bureau within the prescribed time limit.
PCT Rule 46. Amendment of Claims Before the International Bureau
The time limit referred to in Article 19 shall be two months from the date of transmittal of the international search report to the International Bureau and to the applicant by the International Searching Authority or 16 months from the priority date, whichever time limit expires later

1864.01 Amendments Filed Under PCT Article 34
37 CFR 1.485. Amendments by applicant during international preliminary examination.
(a) The applicant may make amendments at the time of filing the Demand. The applicant may also make amendments within the time limit set by the International Preliminary Examining Authority for reply to any notification under § 1.484(b) or to any written opinion.

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8 brandonsaNo Gravatar February 18, 2013 at 12:06 am

About Amendment under PCT art 34 (chapter II). There is no statement about 3/22, check MPEP 1864.01 and 37 CFR 1.485 (copy/paste below). If any find a quotes about 3/22 for amendment under art 34, please advice.

———1871 e8r8:1800-146

9 sethzNo Gravatar January 22, 2010 at 5:18 pm

summary:
chapter I: 3/9 mth (receipt of search copy/priority) 1844.01 VIII
chapter II: 3/22 mth (ISR/priority) 1842 V.A.
Amendment after chapter I: 2/16 mth (ISR/priority) PCT Rule 46

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10 SNo Gravatar April 14, 2010 at 3:50 pm

Thank you for that summary!!!

made a lot of sense.

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11 FrancoisNo Gravatar July 31, 2010 at 3:31 pm

I believe the answer is 2 months.

1845.02 On the second page of the actual form “Notification of transmittal of the internatioanl seach report and the written opinion of the international searching authority, or the declaration”, under “Instructions concerning amendmeents under article 19”, next to “When?” appears “Within 2 months from the date of transmittal of the internatioanl search report or 16 months from th priority date, whichever time limit expires later”.

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12 toomuch23No Gravatar November 1, 2010 at 8:07 pm

If priority date is at 0 months, your PCT filing at 12 months, your ISR and written opinion come at 16 months. You have 2 months from ISR to file amendments to the CLAIMS (i.e. claim amendment up to 18 months from priority or 6 months from PCT filing). 18 Months is also the date of international publication. You have 3 months from the ISR to file an ‘early’ demand (filed to the international preliminary examining authority), this would put you at 19 Months from priority or 7 months from PCT filing. You can file a regular demand up to 22 months (which includes Article 34 amendments, including changes to S,C, D (you should double check the Article 34 S,C,D stuff). The reason (if I recall correctly) there are two different demand dates is that sometimes the ISR comes way late, and if one choses to file a demand, and they have not received their ISR, they still know that the demand must be made by 22 months from priority or 10 months from PCT filing.

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13 toomuch23No Gravatar November 1, 2010 at 8:22 pm

Thus, you have two different chances to make amendments to your application. I think the regular demand is a type of safety valve for those who never received their ISR, so that they may still makes changes before its too late (not including the fact that you can file Oath and Translation as late as 32 months). Keep in mind that if you do make changes in reply to the ISR (which is sent from the ISA, = USPTO if filled in the U.S.), those changes can only go to the claims (see article 19). And of course priority can be corrected up to 16 months from priority or 4 Months from PCT filing. When I said ‘demand’ from above i was referring to Chapter II demand, sorry about that, when i say PCT filing i mean international filing.

14 BigBadVoodoDaddyNo Gravatar July 11, 2011 at 10:15 pm

see 1893.03 (c)

If the priority claim in the national stage application is to an application, the priority of which was not claimed in the international stage of the international application, the claim for priority must be denied for failing to meet the requirements of the Patent Cooperation Treaty, specifically PCT Rule 4.10.

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15 DanielNo Gravatar August 3, 2011 at 11:07 am

Had a question about Chapter 1 on 7/29/2011. See sethz’s summary above for the simple approach.

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16 maggieNo Gravatar November 15, 2011 at 4:23 pm

I had a question about Amendment under PCT art 19 (chapter I). 8/24/2011

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17 Miss_ANo Gravatar May 22, 2012 at 9:04 am

Got a question on PCT on 5/22/12. Need to know that PCT filed before May 29, 2000 won’t be able to…

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18 Churning AwayNo Gravatar June 14, 2012 at 2:10 pm

Could not find anything on May 29, 2000…

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19 Churning AwayNo Gravatar June 14, 2012 at 2:18 pm

Could you mean November 29, 2000 which a PCT filing wouldn’t have a 102(e) as the IA?

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