Patent Cooperation Treaty; with Regulations in the United States

RULE 34

MINIMUM DOCUMENTATION

34.1 Definition

(a) The definitions contained in Article 2(i) and (ii) shall not apply for
the purposes of this Rule.

(b) The documentation referred to in Article 15(4) (“minimum
documentation”) shall consist of:

(i) the “national patent documents” as specified in paragraph (c),

(ii) the published international (PCT) applications, the published
regional applications for patents and inventors’ certificates, and the
published regional patents and inventors’ certificates,

(iii) such other published items of non-patent literature as the
International Searching Authorities shall agree upon and which shall be
published in a list by the International Bureau when agreed upon for the
first time and whenever changed.

(c) Subject to paragraphs (d) and (e), the “national patent documents”
shall be the following:

(i) the patents issued in and after 1920 by France, the former
Reichspatentamt of Germany, Japan, the Soviet Union, Switzerland (in French
and German languages only), the United Kingdom, and the United States of
America,

(ii) the patents issued by the Federal Republic of Germany,

(iii) the patent applications, if any, published in and after 1920 in
the countries referred to in items (i) and (ii),

(iv) the inventors’ certificates issued by the Soviet Union,

(v) the utility certificates issued by, and the published
applications for utility certificates of, France.

(vi) such patents issued by, and such patent applications published
in, any other country after 1920 as are in the English, French, or German
language and in which no priority is claimed, provided that the national
Office of the interested country sorts out these documents and places them
at the disposal of each International Searching Authority.

(d) Where an application is republished once (for example, an
Offenlegungschrift as an Auslegeschrift) or more than once, no
International Searching Authority shall be obliged to keep all versions in
its documentation; consequently, each such Authority shall be entitled not
to keep more than one version. Furthermore, where an application is granted
and is issued in the form of a patent or a utility certificate (France), no
International Searching Authority shall be obliged to keep both the
application and the patent or utility certificate (France) in its
documentation; consequently, each such Authority shall be entitled to keep
either the application only or the patent or utility certificate (France)
only.

(e) Any International Searching Authority whose official language, or one
of whose official languages, is not Japanese or Russian is entitled not to
include in its documentation those patent documents of Japan and the Soviet
Union, respectively, for which no abstracts in the English language are
generally available. English abstracts becoming generally available after
the date of entry into force of these Regulations shall require the
inclusion of the patent documents to which the abstracts refer no later
than 6 months after such abstracts become generally available. In case of
the interruption of abstracting services in English in technical fields in
which English abstracts were formerly generally available, the Assembly
shall take appropriate measures to provide for the prompt restoration of
such services in the said fields.

(f) For the purposes of this Rule, applications which have only been laid
open for public inspection are not considered published applications.

RULE 35

THE COMPETENT INTERNATIONAL SEARCHING AUTHORITY

35.1 When Only One International Searching Authority is Competent

Each receiving Office shall, in accordance with the terms of the applicable
agreement referred to in Article 16(3)(b), inform the International Bureau
which International Searching Authority is competent for the searching of
the international applications filed with it, and the International Bureau
shall promptly publish such information.

35.2 When Several International Searching Authorities are Competent

(a) Any receiving Office may, in accordance with the terms of the
applicable agreement referred to in Article 16(3)(b), specify several
International Searching Authorities:

(i) by declaring all of them competent for any international
application filed with it, and leaving the choice to the applicant, or

(ii) by declaring one or more competent for certain kinds of
international applications filed with it, and declaring one or more others
competent for other kinds of international applications filed with it,
provided that, for those kinds of international applications for which
several International Searching Authorities are declared to be competent,
the choice shall be left to the applicant.

(b) Any receiving Office availing itself of the faculty provided in
paragraph (a) shall promptly inform the International Bureau, and the
International Bureau shall promptly publish such information.

RULE 36

MINIMUM REQUIREMENTS FOR
INTERNATIONAL SEARCHING AUTHORITIES

36.1 Definition of Minimum Requirements

The minimum requirements referred to in Article 16(3)(c) shall be the
following:

(i) the national Office or intergovernmental organization must have
at least 100 full-time employees with sufficient technical qualifications
to carry out searches;

(ii) that Office or organization must have in its possession at least
the minimum documentation referred to in Rule 34, properly arranged for
search purposes;

(iii) that Office or organization must have a staff which is capable
of searching the required technical fields and which has the language
facilities to understand at least those languages in which the minimum
documentation referred to in Rule 34 is written or is translated.

RULE 37

MISSING OR DEFECTIVE TITLE

37.1 Lack of Title

If the international application does not contain a title and the receiving
Office has notified the International Searching Authority that it has
invited the applicant to correct such defect, the International Searching
Authority shall proceed with the international search unless and until it
receives notification that the said application is considered withdrawn.

37.2 Establishment of Title

If the international application does not contain a title and the
International Searching Authority has not received a notification from the
receiving Office to the effect that the applicant has been invited to
furnish a title, or if the said Authority finds that the title does not
comply with Rule 4.3, it shall itself establish a title.

RULE 38

MISSING ABSTRACT

38.1 Lack of Abstract

If the international application does not contain an abstract and the
receiving Office has notified the International Searching Authority that it
has invited the applicant to correct such defect, the International
Searching Authority shall proceed with the international search unless and
until it receives notification that the said application is considered
withdrawn.

38.2 Establishment of Abstract

(a) If the international application does not contain an abstract and the
International Searching Authority has not received a notification from the
receiving Office to the effect that the applicant has been invited to
furnish an abstract, or if the said Authority finds that the abstract does
not comply with Rule 8, it shall itself establish an abstract (in the
language in which the international application is published). In the
latter case, it shall invite the applicant to comment on the abstract
established by it within 1 month from the date of the invitation.

(b) The definitive contents of the abstract shall be determined by the
International Searching Authority.
RULE 39

SUBJECT MATTER UNDER ARTICLE 17(2)(a)(i)

39.1 Definition

No International Searching Authority shall be required to search an
international application if, and to the extent to which, its subject
matter is any of the following:

(i) scientific and mathematical theories,

(ii) plant or animal varieties or essentially biological processes
for the production of plants and animals, other than microbiological
processes and the products of such processes,

(iii) schemes, rules or methods of doing business, performing purely
mental acts or playing games,

(iv) methods for treatment of the human or animal body by surgery or
therapy, as well as diagnostic methods,

(v) mere presentations of information,

(vi) computer programs to the extent that the International Searching
Authority is not equipped to search prior art concerning such programs.

RULE 40

LACK OF UNITY OF INVENTION (INTERNATIONAL SEARCH)

40.1 Invitation to Pay

The invitation to pay additional fees provided for in Article 17(3)(a)
shall specify the reasons for which the international application is not
considered as complying with the requirement of unity of invention and
shall indicate the amount to be paid.

40.2 Additional Fees

(a) The amount of the additional fee due for searching under Article
17(3)(a) shall be determined by the competent International Searching
Authority.

(b) The additional fee due for searching under Article 17(3)(a) shall be
payable direct to the International Searching Authority.

(c) Any applicant may pay the additional fee under protest, that is,
accompanied by a reasoned statement to the effect that the international
application complies with the requirement of unity of invention or that the
amount of the required additional fee is excessive. Such protest shall be
examined by a three-member board or other special instance of the
International Searching Authority or any competent higher authority, which,
to the extent that it finds the protest justified, shall order the total or
partial reimbursement to the applicant of the additional fee, On the
request of the applicant, the text of both the protest and the decision
thereon shall be notified to the designated Offices together with the
international search report. The applicant shall submit any translation
thereof with the furnishing of the translation of the international
application required under Article 22.

(d) The three-member board, special instance or competent higher authority,
referred to in paragraph (c), shall not comprise any person who made the
decision which is the subject of the protest.
40.3 Time Limit

The time limit provided for in Article 17(3)(a) shall be fixed, in each
case, according to the circumstances of the case, by the International
Searching Authority; it shall not be shorter than 15 or 30 days,
respectively, depending on whether the applicant’s address is in the same
country as or in a different country from that in which the International
Searching Authority is located, and it shall not be longer than 45 days,
from the date of the invitation.

RULE 41

THE INTERNATIONAL-TYPE SEARCH

41.1 Obligation to Use Results; Refund of Fee

If reference has been made in the request, in the form provided for in Rule
4.11, to an international-type search carried out under the conditions set
out in Article 15(5), the International Searching Authority shall, to the
extent possible, use the results of the said search in establishing the
international search report on the international application. The
International Searching Authority shall refund the search fee, to the
extent and under the conditions provided for in the agreement under Article
16(3)(b), if the international search report could wholly or partly be
based on the results of the international-type search.

RULE 42

TIME LIMIT FOR INTERNATIONAL SEARCH

42.1 Time Limit for International Search

All agreements concluded with International Searching Authorities shall
provide for the same time limit for establishing the international search
report or the declaration referred to in Article 17(2)(a). This time limit
shall not exceed 3 months from the receipt of the search copy by the
International Searching Authority, or 9 months from the priority date,
whichever time limit expires later. For a transitional period of 3 years
from the entry into force of the Treaty, time limits for the agreement with
any International Searching Authority may be individually negotiated,
provided that such time limits shall not extend by more than 2 months the
time limits referred to in the preceding sentence and in any case shall not
go beyond the expiration of the 18th month after the priority date.