1821 The Request [R-01.2024]

A general overview of certain aspects of the request follows.

The Request must either be made on a standardized form PCT/RO/101 to be filled in with the required indications or be presented as a computer printout complying with the PCT Administrative Instructions. The Request form PCT/RO/101 may be downloaded for free from WIPO’s website (www.wipo.int/pct/en/forms/). Applicants may also obtain an English language Request form free of charge from the United States Patent and Trademark Office using the following address: Mail Stop PCT, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.

As an alternative to using the standardized Request form PCT/RO/101, applicants may use WIPO’s ePCT system to generate a computer printout of the Request complying with the PCT Administrative Instructions. ePCT incorporates and expands the functionality of WIPO’s prior PCT-SAFE software. As of July 1, 2022, WIPO no longer develops, distributes, or supports PCT-SAFE. ePCT is a web-based application that does not require installation and subsequent periodic updates of any software on the user's computer. The ePCT system validates user-entered data and creates a zip file containing the Request and fee calculation sheet in PDF format. Submission of the ePCT zip file with an international application filed electronically (i.e., via the USPTO patent electronic filing system) entitles the applicant to a reduction of the international filing fee. For information on ePCT, see https://pct.wipo.int/ePCT.

For inventions made in the United States, applicants should be mindful of certain foreign filing restrictions and the potential need to obtain a foreign filing license when using WIPO’s ePCT system. See MPEP § 1832 and Facilitating the Use of the World Intellectual Property Organization’s ePCT System To Prepare International Applications for Filing With the United States Receiving Office, 85 Fed. Reg. 61604 (Sept. 30, 2020).

The Request contains a petition for the international application to be processed according to the PCT and must also contain certain indications. It must contain the title of the invention. It must identify the applicant and the agent (if any), and must contain the designation of at least one Contracting State.

The Request may not contain any matter that is not specified in PCT Rules 4.1 to 4.17 or permitted under PCT Rule 4.18(a) by the Administrative Instructions. Any additional material will be deleted ex officio. See PCT Rule 4.18(b) and Administrative Instructions Section 303.

I. DATES

Each date appearing in the international application or in any correspondence must be indicated by the Arabic number of the day, the name of the month and the Arabic number of the year, in that order. In the request, after, below or above that indication, the date should be repeated in parentheses with a two-digit Arabic numeral each for the number of the day and for the number of the month and followed by the number of the year in four digits, in that order and separated by periods, slashes or hyphens after the digit pairs of the day and of the month, for example, "20 March 2020 (20.03.2020)," "20 March 2020 (20/03/2020)," or "20 March 2020 (20-03-2020)." See Administrative Instructions Section 110.

II. SUPPLEMENTAL BOX

This box is used for any material which cannot be placed in one of the previous boxes because of space limitations. The supplemental information placed in this box should be clearly entitled with the Box number from which it is continued, e.g., “Continuation of Box No. IV.” For indicating the international application as a continuation or continuation-in-part of an earlier application, see MPEP § 1828.02.

III. FILE REFERENCE

The applicant or the applicant’s agent may indicate a file reference in the box provided for this purpose on the first sheet of the Request form, on each page of the other elements of the international application, on the first sheet of the demand form, and in any other correspondence relating to the international application. PCT Rule 11.6(f) indicates that the file reference may be included in the top margin of the sheets of the international application. As provided in Administrative Instructions Section 109, the file reference may be composed either of letters of the Latin alphabet or Arabic numerals, or both. It may not exceed 25 characters including spaces. If the file reference exceeds 25 characters, the receiving Office may ex officio truncate the reference number to 25 characters and notify the applicant. The receiving Office, the International Bureau, the International Searching Authority and the International Preliminary Examining Authority (International Authorities) will use the file reference in correspondence with the applicant.

IV. TITLE OF INVENTION

The Request must contain the title of the invention; the title must be short (preferably 2 to 7 words) and precise (PCT Rule 4.3). The title in Box No. I of the Request is considered to be the title of the application. The title appearing on the first page of the description (PCT Rule 5.1(a)) and on the page containing the abstract should be consistent with the title indicated in Box No. I of the Request form.

A title should not be changed by the examiner merely because it contains words which are not considered descriptive of the invention. Words, for example, such as “improved” or “improvement of” are acceptable. If the title is otherwise not descriptive of the invention, a change to a more descriptive title should be made and the applicant informed thereof in the search report.

Where the title is missing or is inconsistent with the title in the description, the receiving Office invites the applicant to correct the missing or inconsistent title.

V. APPLICANT

See MPEP § 1806 regarding who can be an applicant.

VI. NAMES

The name of a natural person must be indicated by the family name followed by the given name(s). Academic degrees or titles or other indications which are not part of the person’s name must be omitted. The family name should preferably be written in capital letters.

The name of a legal entity must be indicated by its full official designation (preferably in capital letters).

VII. ADDRESSES

Addresses must be indicated in such a way as to satisfy the requirements for prompt postal delivery at the address indicated and must consist of all the relevant administrative units up to and including the house number (if any). The address must also include the country.

VIII. DESIGNATION OF STATES

The filing of an international application request constitutes: (A) the designation of all Contracting States that are bound by the Treaty on the international filing date; (B) an indication that the international application is, in respect of each designated State to which PCT Article 43 or 44 applies, for the grant of every kind of protection which is available by way of the designation of that State; and (C) an indication that the international application is, in respect of each designated State to which PCT Article 45(1) applies, for the grant of a regional patent and also, unless PCT Article 45(2) applies, a national patent. See 37 CFR 1.432 and PCT Rule 4.9.

Pursuant to PCT Rule 4.9(b), certain States may be excepted from the all-inclusive designation system under limited circumstances. Specifically, where the international application contains a priority claim to an earlier national application having effect in a State whose national law provides that the designation of such State has the result that the earlier national application ceases to have effect in such State, then the request may contain an indication that such State is not designated. Applicability of PCT Rule 4.9(b) is contingent upon timely notice by the affected Office to the International Bureau. The Request may exclude the following designations: Germany (DE), Japan (JP), and Republic of Korea (KR). See Reservations, Declarations, Notifications and Incompatibilities at www.wipo.int/pct/en/texts/ reservations/res_incomp.html.

[top]