14.2 PCT International Phase & Chapter I / Chapter II

PCT International Phase & Chapter I / Chapter II

The International Phase of a Patent Cooperation Treaty (PCT) application is divided into two major operational frameworks: Chapter I (mandatory for all international filings) and Chapter II (an optional preliminary examination procedure). Understanding the procedural sequence, work products, amendment options, and timing deadlines of both chapters is vital for Patent Bar examination success.

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1. Chapter I Proceedings & Primary Work Products

Every international application filed under the PCT automatically enters Chapter I. The primary objective of Chapter I is to conduct an objective prior art search and publish the application for public inspection worldwide.

The International Search Report (ISR) and Written Opinion (WO-ISA)

Within three months from the receipt of the search copy by the International Searching Authority (ISA) or nine months from the priority date (whichever expires later), the ISA establishes two essential documents under PCT Rule 42:

1. International Search Report (ISR - Form PCT/ISA/210): Contains a list of published patent documents and technical literature identified during the search. Cited references are classified using standardized PCT category codes:
   • Category X: A single reference that, taken alone, anticipates the novelty or inventive step of a claimed feature.
   • Category Y: A reference that, when combined with one or more other Category Y references, renders a claimed feature obvious to a person skilled in the art.
   • Category A: Reference defining the general state of the art, not considered to be of particular relevance.
   • Category P: Document published prior to the international filing date but after the claimed priority date.
   • Category E: Earlier patent document published on or after the international filing date.
2. Written Opinion of the ISA (WO-ISA - Form PCT/ISA/237): Provides a comprehensive, detailed preliminary assessment of whether each claim satisfies the criteria of novelty (Article 33(2)), inventive step / non-obviousness (Article 33(3)), and industrial applicability (Article 33(4)).

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2. WIPO International Publication and U.S. Provisional Rights

Under PCT Article 21 and MPEP 1860, the International Bureau (IB) of WIPO publishes the international application promptly after the expiration of 18 months from the earliest priority date.

Contents of WIPO Publication

International publication occurs in electronic format on WIPO's PATENTSCOPE portal. The publication includes the standardized cover page (Form PCT/BIB/96), the description, claims, abstract, drawings, the ISR, and any Article 19 claim amendments filed by the applicant.

Provisional Rights in the United States (35 U.S.C. § 154(d))

International publication under the PCT grants the applicant conditional statutory rights in the United States known as Provisional Rights:

• Statutory Right: Under 35 U.S.C. § 154(d), a patent owner may recover reasonable royalties from an infringer who makes, uses, offers for sale, sells, or imports the patented invention during the period between international publication and patent grant.
• Mandatory Requirements: To enforce provisional rights under § 154(d) based on a PCT publication, three conditions must be satisfied:
  1. The international application must have been published by WIPO in English (or, if published in a non-English language, an English translation must be filed with the USPTO and served on the infringer);
  2. The infringer must have had actual notice of the published international application; and
  3. The claims in the issued U.S. patent must be substantially identical to the claims appearing in the published international application.

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3. Article 19 Claim Amendments before the International Bureau

Upon receiving the ISR and Written Opinion, the applicant may decide to narrow or modify the patent claims to distinguish them from the cited prior art before international publication occurs.

Scope and Limitations of Article 19 Amendments (PCT Article 19 & MPEP 1849)

• Target of Amendment: Article 19 permits amendments to the CLAIMS ONLY. The description, abstract, and drawings cannot be amended under Article 19.
• Filing Location: Article 19 amendments must be filed directly with the International Bureau in Geneva, not with the Receiving Office or the ISA.
• Time Limit: Article 19 amendments must be filed within 2 months from the date of transmittal of the ISR to the applicant, or 16 months from the earliest priority date, whichever period expires later.
• New Matter Prohibition: Amendments must not go beyond the disclosure in the international application as filed. The submission must be accompanied by a brief statement explaining the amendments and their impact on the claims.

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4. Chapter II Demand for International Preliminary Examination

Chapter II of the PCT is an optional phase that allows the applicant to engage in bilateral, interactive examination with an examiner to overcome negative prior art findings before entering national stage proceedings.

Filing the Demand (PCT Article 31 & MPEP 1864)

To initiate Chapter II examination, the applicant must file a formal Demand (Form PCT/IPEA/401) with a competent International Preliminary Examination Authority (IPEA) (such as IPEA/US at the USPTO).

• Eligibility: At least one applicant must be a resident or national of a PCT Contracting State bound by Chapter II.
• Strict Time Limit (PCT Rule 54bis): The Demand must be filed prior to the expiration of whichever of the following periods expires later:
  1. 3 months from the date of transmittal of the ISR and WO-ISA; or
  2. 22 months from the earliest priority date.
• Fees: Initiating Chapter II requires payment of a Handling Fee (for the IB) and a Preliminary Examination Fee (for the IPEA) within one month of filing the Demand.

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5. Article 34 Amendments and the Final IPRP Reports

Unlike Article 19, Chapter II provides a robust mechanism under PCT Article 34 to amend the complete application disclosure and present legal arguments directly to the IPEA examiner.

Scope of Article 34 Amendments (PCT Article 34 & MPEP 1871)

• Target of Amendment: Under Article 34(2)(b), the applicant may amend the specification (description), claims, AND drawings.
• Filing Location: Filed directly with the IPEA (e.g., IPEA/US), typically submitted simultaneously with the Demand or in response to a Written Opinion issued by the IPEA.
• Examination Procedure: The IPEA examiner reviews the Article 34 amendments and arguments. If necessary, the IPEA may issue a Written Opinion of the IPEA (Form PCT/IPEA/408), offering the applicant an opportunity to file further amendments or arguments before examination concludes.

International Preliminary Report on Patentability (IPRP)

The international phase culminates in the issuance of an International Preliminary Report on Patentability (IPRP), which is forwarded to designated national offices for use during national phase examination:

• IPRP Chapter I (Form PCT/IB/373): If the applicant does not file a Chapter II Demand, the IB automatically converts the Written Opinion of the ISA (WO-ISA) into an IPRP Chapter I upon the expiration of 30 months from the priority date.
• IPRP Chapter II (Form PCT/IPEA/409): If the applicant files a Chapter II Demand and submits Article 34 amendments, the IPEA issues an IPRP Chapter II, presenting a definitive, non-binding opinion on whether each claim satisfies novelty, inventive step, and industrial applicability in light of the amended application.

Summary Comparison: Article 19 vs. Article 34 Amendments