UNITED STATES PATENT AND TRADEMARK OFFICE An Agency of the Department of Commerce. Table of Contents
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1 UNITED STATES PATENT AND TRADEMARK OFFICE An Agency of the Department of Commerce Filing a Demand for International Preliminary Examination in the United States International Preliminary Examining Authority (IPEA/US) relating to a previously filed international application under the PCT July 2010 Table of Contents NOTE regarding competence of the IPEA/US...2 NOTE regarding Chapter II document code descriptions...2 PCT Help Desk...2 Electronic filing requirements...3 Time limit for making a Demand...3 Chapter II documents that must be filed to demand international preliminary examination under Chapter II of the Patent Cooperation Treaty (PCT)...3 Chapter II fee payment... 4 Chapter II documents that may accompany a demand for international preliminary examination under Chapter II of the PCT or may be filed after a demand, but within the relevant time period... 4 Miscellaneous communication from applicant filed during Chapter II, which document is not limited to Chapter II examination... 5 Rarely, there may be a Chapter II communication for which no other document code is applicable... 6
2 NOTE regarding competence of the IPEA/US A Demand may be filed with the IPEA/US by a registered user via EFS-Web by selecting Existing Application and providing the required information for the existing PCT international application. If the IPEA/US receives a Demand and determines that it is a competent examining authority, the Demand will be processed by the IPEA/US. If it is determined that the IPEA/US is not competent, the Demand will be forwarded to the International Bureau for further processing. Therefore, if applicant does not want the IPEA/US to perform the examination, the Demand should be filed directly with the selected IPEA. Further, to avoid any misinterpretation of the intent of the applicant, it is preferred that applicant not provide to the RO/US or ISA/US a copy of a Demand filed with another IPEA. NOTE regarding Chapter II document code descriptions Applicants are advised that it is important to use the correct document code description (i.e., document descriptions associated with Chapter II of the PCT) whenever possible because Chapter II document code descriptions are used to determine which documents are not viewable in Public PAIR until after the expiration of 30 months from the priority date. Using document code category PCT Chapter II will help ensure that a Chapter II document is indexed with a Chapter II document description. If other document code categories are used, whenever possible select the document code description that begins CHII. PCT Help Desk For any questions relating to PCT documents, please contact the PCT Help Desk. Phone: (571) Hours: Monday Friday 9:00 a.m. to 4:30 p.m. Fax: (571) Hours: 24 hours/day United States Patent and Trademark Office Page 2 of 6
3 Electronic filing requirements The required page size for a PCT international application filed via EFS-Web in pdf format is A4. See PCT Rule All pdf documents submitted via EFS-Web must have a minimum resolution of 300 dpi. Additional documents must not be added to the PCT Easy zip file. Time limit for making a Demand For international applications filed on or after January 1, 2004, a demand may be made anytime prior to the expiration of the later of the following time periods, as set forth in PCT Rule 54bis.1: 22 months from the earliest priority date, or 3 months from the transmittal of the international search report and written opinion of the International Searching Authority. Chapter II documents that must be filed to demand international preliminary examination under Chapter II of the Patent Cooperation Treaty (PCT) Chapter II Demand for international preliminary examination (Form PCT/IPEA/401) Document code category: PCT Chapter II and PCT Form Document code description: CHII Form PCT/IPEA/401 Demand (Optional) Chapter II demand fee calculation sheet annex Document code category: PCT Chapter II and PCT Form Document code description: CHII Form PCT/IPEA/401 Annex United States Patent and Trademark Office Page 3 of 6
4 Chapter II fee payment ADVISORY: If filing by EFS-Web, do NOT attach the PTO-2038 form as a PDF along with your EFS-Web submission. Please be advised that this is not recommended and by doing so your credit card information may be displayed via PAIR. To protect your information, it is recommended paying fees online by using the electronic payment method. Chapter II demand fee payment made in response to an invitation (PCT/IPEA/403, PCT/IPEA/440) or spontaneously. May be made electronically via the fee payment screens. May be made on the Chapter II demand fee calculation sheet annex, including an authorization to charge a deposit account. Document code category: PCT Chapter II and PCT Form Document code description: CHII Form PCT/IPEA/401 annex May be made by uploading a document giving authorization to charge a deposit ccount. Document code category: PCT Chapter II and PCT General Transmittal Document code description: CHII Fee payment international application Chapter II documents that may accompany a demand for international preliminary examination under Chapter II of the PCT or may be filed after a demand, but within the relevant time period Chapter II Demand fee calculation sheet annex Document code category: PCT Chapter II Document code description: CHII Form IPEA/401 Annex Chapter II Request for recording a change under PCT Rule 92bis, together with supporting documents, when the information provided on the demand is not the same as the information provided on the request (Form PCT/RO/101) or previously recorded by the International Bureau under PCT Rule 92bis (i.e., Form PCT/IB/306) Document code category: PCT Chapter II and PCT Change Request Document code description: CHII Request for recording change/pct Rule 92bis United States Patent and Trademark Office Page 4 of 6
5 Chapter II Response to either the written opinion of the international searching authority (PCT/ISA/237) or the written opinion (PCT/IPEA/408) Transmittal letter, letter accompanying replacement sheets, comments, remarks, and/or marked-up versions of the replaced sheets Document code description: CHII Resp to the written opinion ISA/237/IPEA/408 Chapter II Replacement amended sheet of claims under PCT Article 34 ADVISORY: Amendments to the claims filed on or after July 1, 2009, require a full set of claims. Document code description: ChII Amendment to the claims PCT Art. 34 Chapter II Replacement amended sheet of description under PCT Article 34 Document code description: CHII Amendments to descript/drawings PCT Art. 34 Chapter II Replacement amended sheet of drawing under PCT Article 34 Document code description: CHII Amendments to descript/drawings PCT Art. 34 Chapter II Request for rectification under PCT Rule 91 Document code category: PCT Chapter II and PCT General Transmittal Document code description: CHII Request for rectification IA Miscellaneous communication from applicant filed during Chapter II, which document is not limited to Chapter II examination Power of attorney Document code category: PCT Change Request and PCT General Transmittal and PCT Application Part Document code description: Power of attorney United States Patent and Trademark Office Page 5 of 6
6 General power of attorney Document code category: PCT Change Requests and PCT Application Part Document code description: Power of attorney Copy of legal entity resolution (e.g., corporation) delegating authority to sign legal documents on behalf of the legal entity Document code category: PCT General Transmittal and Application Part Document code description: Corp resolution/auth to act on behalf of corp Rarely, there may be a Chapter II communication for which no other document code is applicable Rarely, there may be a document for which no other document code is applicable. Document code category: PCT Chapter II and PCT General Transmittal Document code description: CHII Misc. communication from applicant United States Patent and Trademark Office Page 6 of 6
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