Manual of Patent Examining Procedure - MPEP
1800 Patent Cooperation Treaty
1865 Filing of Demand
PCT ARTICLE 31
Demand for International Preliminary Examination
(1) On the demand of the applicant, his international application shall be the subject of an international preliminary examination as provided in the following provisions and the Regulations.
(3) The demand for international preliminary examination shall be made separately from the international application. The demand shall contain the prescribed particulars and shall be in the prescribed language and form.
(6)
(a) The demand shall be submitted to the competent International Preliminary Examining Authority referred to in Article 32.
Applicants should mail the Demand and appropriate fees directly to the International Preliminary Examining Authority (IPEA) they desire to prepare the International Preliminary Examination Report. United States applicants who have had the international search prepared by the European Patent Office (EPO) may also request the EPO to act as the IPEA with some exceptions. See MPEP § 1865.01.
Demands filed in the European Patent Office should be delivered to the European Patent Office Headquarters at Munich:
Location:
Erhardstr. 27
D-80331 Munchen
Germany
Mailing address:
D-80298 Munchen
Germany
Demands filed in the United States Patent and Trademark Office (USPTO) should be addressed as follows:
Mailing address for delivery by the U.S. Postal Service:
Mail Stop PCT
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450.
OR
If hand-carried directly to the USPTO :
Customer Service Window, Mail Stop PCT
Randolph Building
401 Dulany Street
Alexandria, VA 22314
The "Express Mail" provisions of 37 CFR 1.10 may be used to file a Demand under Chapter II in the USPTO. Applicants are advised that failure to comply with the provisions of 37 CFR 1.10 will result in the paper or fee being accorded the date of receipt and not the date of deposit. See MPEP § 513.
Demand for international preliminary examination may be submitted to the USPTO via facsimile. The Certificate of Mailing or Transmission practice under 37 CFR 1.8 CANNOT be used to file a Demand if the date of deposit is desired. If used, the date of the Demand will be the date of receipt in the USPTO. See MPEP § 513, § 1834, and § 1834.01.
All Demands filed in the USPTO must be in the English language.
PCT Rule 59.3 was amended July 1, 1998 to provide a safeguard in the case of a Demand filed with an International Preliminary Examining Authority which is not competent for the international preliminary examination of a particular international application. The USPTO will forward such a Demand to the International Bureau and the International Bureau will forward the Demand to a competent International Preliminary Examining Authority pursuant to PCT Rule 59.3(c). The competent International Preliminary Examining Authority will process the Demand based on the date of receipt in the USPTO. See 37 CFR 1.416(c)(2).
CHOICE OF EXAMINING AUTHORITY
For most applications, U.S. residents and nationals may choose to have the international preliminary examination done by the EPO if the EPO served as the International Searching Authority (ISA). However, for certain applications including one or more claims directed to the field of biotechnology, the field of business methods or the field of telecommunication, the EPO will not act as a competent IPEA. See MPEP § 1865.01.
The IPEA/US will serve as International Preliminary Examining Authority for U.S. residents and nationals if the U.S. or EPO served as ISA and the international application was filed in the U.S. Receiving Office or the International Bureau as receiving Office.
The IPEA/US will also serve as International Preliminary Examining Authority for residents or nationals of Barbados, Brazil, Egypt, India, Israel, Mexico, New Zealand, the Philippines, Saint Lucia, South Africa, and Trinidad and Tobago if the U.S. was the International Searching Authority.
