Patent Bar Examination (USPTO Registration Exam) International Patent Practice (PCT and Hague) Syllabus

International Patent Practice (PCT and Hague) syllabus — full chapter and topic list

Expand any chapter to see its topics and sub-topics. This is the whole examinable outline for International Patent Practice (PCT and Hague) in Patent Bar Examination (USPTO Registration Exam), not a summary of it.

1. 1

   PCT System Fundamentals

   4 topics

   • Purpose and structure of the PCT
   • Filing requirements and the international filing date
   • Receiving Offices and competent authorities
   • The USPTO as Receiving Office, ISA, and IPEA
2. 2

   International Phase

   4 topics

   • International search and the written opinion
   • International publication
   • Chapter II international preliminary examination
     • Filing a demand
     • Amendments under Article 34
   • Article 19 amendments to claims
3. 3

   National Stage Entry

   4 topics

   • Entry into the U.S. national stage under 35 USC 371
     • 30-month deadline
     • Required documents and fees
   • Bypass continuation applications under 35 USC 111(a)
   • Restoration of the right of priority in the PCT
   • Unity of invention versus U.S. restriction practice
4. 4

   Hague System for Designs

   3 topics

   • International design applications under the Hague Agreement
   • Designating the United States
   • Examination of Hague applications at the USPTO

International Patent Practice (PCT and Hague) flashcards for Patent Bar Examination (USPTO Registration Exam)

25 of 51 cards from the International Patent Practice (PCT and Hague) deck — real questions with worked answers.

1. What is the Patent Cooperation Treaty (PCT) and what does it provide?

   An international treaty (administered by WIPO) that lets an applicant file a single 'international application' to seek patent protection in many contracting states at once. It does NOT grant an 'international patent'; patents are still granted nationally/regionally during the national stage.

2. What are the two main phases (chapters) of the PCT process?

   Chapter I: filing, international search, written opinion, and international publication. Chapter II: optional international preliminary examination (demand) producing the IPRP Chapter II. Both end before grant, which occurs only in the national stage.

3. What is the maximum time, in general, to enter the national stage from the priority date under the PCT?

   30 months from the priority date (the U.S. uses 30 months under 35 USC 371). Some offices allow 31 months; the time runs from the earliest priority date, not the international filing date.

4. What are the minimum requirements to obtain a PCT international filing date?

   (1) Applicant is a resident/national of a PCT contracting state; (2) the application is in a prescribed language; (3) it contains an indication it is intended as an international application; (4) the name of the applicant; (5) a part that appears to be a description; and (6) a part that appears to be a claim.

5. Once an international filing date is accorded to a PCT application, what legal effect does it have?

   The international filing date has the effect of a regular national filing in each designated state as of that date, and the international application is equivalent to a national application filed in each designated office.

6. What is a Receiving Office (RO) in the PCT system?

   The office where the PCT international application is filed; it checks formalities, accords the international filing date, collects fees, and transmits the record copy to the International Bureau and the search copy to the ISA.

7. Where may a U.S. resident or national file a PCT international application as Receiving Office?

   With the USPTO as RO, or with the International Bureau (IB) as RO. (The IB acts as RO for applicants of any contracting state.)

8. What is the International Bureau (IB) of WIPO's role in the PCT?

   It is the central administrative body: it holds the record copy (the authoritative copy), handles international publication, communicates with designated offices, and can itself act as a Receiving Office.

9. When acting as Receiving Office, what languages may the USPTO accept for a PCT application?

   The USPTO/RO accepts English. (For a foreign filing license, content may need to be filed first in the U.S.; a U.S.-origin invention generally requires the USPTO as RO or IB with a foreign filing license.)

10. What is the International Searching Authority (ISA) and what does it produce?

    An authority that conducts the international search of prior art for the PCT application and produces the International Search Report (ISR) and a Written Opinion of the ISA (WO/ISA).

11. Which ISAs may a U.S. applicant who filed with the USPTO/RO choose?

    The USPTO, and (by agreement) several others such as the EPO, KIPO (Korea), IP Australia, the Russian (Rospatent), Singapore (IPOS), and Israel (ILPO) — depending on current USPTO agreements and limits.

12. What is the International Preliminary Examining Authority (IPEA)?

    The authority that conducts Chapter II international preliminary examination when a demand is filed, producing the International Preliminary Report on Patentability Chapter II (IPRP Ch. II), a non-binding opinion on novelty, inventive step, and industrial applicability.

13. What is the deadline to file the International Search Report (ISR) and Written Opinion?

    The ISA must establish the ISR and Written Opinion within 3 months from receipt of the search copy or 9 months from the priority date, whichever expires later.

14. What three patentability criteria does the ISA's written opinion address?

    Novelty, inventive step (non-obviousness), and industrial applicability (utility) — these are the PCT analogues of the substantive patentability standards.

15. Is the ISA's Written Opinion or the IPRP binding on national offices?

    No. The international search report, written opinion, and IPRP are non-binding. Each designated/elected office independently examines and decides patentability under its own national law.

16. When is a PCT international application published, and by whom?

    The International Bureau publishes the international application promptly after 18 months from the priority date (along with the ISR if available).

17. What is the effect of international publication of a PCT application under U.S. law?

    If published in English, it can give provisional rights and serve as prior art under 35 USC 102 as of its international filing date (treated like a published U.S. application that designated the U.S.).

18. Can an applicant request early publication of a PCT application before 18 months?

    Yes. The applicant may ask the IB to publish earlier than 18 months from the priority date; the application is then published promptly after the request (with the ISR if available).

19. What is a Chapter II 'Demand' in the PCT and where is it filed?

    A request for international preliminary examination, filed with a competent IPEA. It triggers Chapter II examination and (historically) the right of amendment under Article 34 and a dialogue with the examiner.

20. What is the deadline to file a Chapter II Demand?

    The later of 3 months from the date of transmittal of the ISR and WO/ISA, or 22 months from the priority date.

21. What are Article 34 amendments in PCT Chapter II?

    During Chapter II preliminary examination, the applicant may amend the claims, description, and drawings before the IPEA establishes the IPRP, provided the amendments do not add new matter beyond the original disclosure.

22. What are Article 19 amendments in the PCT?

    After receiving the ISR, the applicant may amend the CLAIMS ONLY, one time, by filing amendments directly with the International Bureau, accompanied by a statement explaining the amendments.

23. What is the deadline to file Article 19 amendments?

    Within 2 months from the date of transmittal of the ISR, or 16 months from the priority date, whichever expires later (the amendment is timely if received by the IB before completion of technical preparations for publication).

24. What is the key difference between Article 19 and Article 34 amendments?

    Article 19 amendments are to the CLAIMS ONLY, filed once with the International Bureau after the ISR (Chapter I). Article 34 amendments may change the claims, description, AND drawings, and are filed with the IPEA during Chapter II examination.

25. Neither Article 19 nor Article 34 amendments may do what?

    They may not add subject matter beyond the disclosure of the international application as originally filed (no new matter).

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