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PCT INTERNATIONAL PATENT APPLICATION FORMALITIES
The patent description must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. It must start with the title of the invention and should generally be in six parts. Those parts should have the following headings: “Technical Field,” “Background Art,” “Disclosure of Invention,” “Brief Description of Drawings,” and “Best Mode for Carrying Out the Invention.” The details required for the disclosure of the invention so that it can be carried out by a person skilled in the art depend on the practice of the national Patent Offices. It is therefore recommended that due account be taken of national practice, for instance in Japan and the United States of America, when the description is drafted. The need to amend the description during the national patent phase may thus be avoided.

The paper must be of A4 size, white and durable. The minimum margins must be 2 cm on the top, the bottom and the right side of the sheet, and 2.5 cm on the left side of the sheet. The margins should not exceed 3 cm on the bottom and the right side of the sheet and 4 cm on the top and the left side of the sheet. The margins must be completely blank, except that a file reference not exceeding 12 characters in length may be placed by the patent applicant in the left-hand corner of the top margin within 1.5 cm from the top of the sheet.

FAQ – PCT INTERNATIONAL PATENT APPLICATION FORMALITIES
What are the elements of an international patent application?

Any international patent application must contain the following elements: request, description, claim or patent claims, one or more drawings, and abstract.

What is the order of the elements of the international patent application?

The elements of the international patent application must be arranged in the following order: request, description, patent claims, abstract, drawings.

How must the sheets of an international patent application be numbered?

All the sheets constituting the international patent application must be numbered in consecutive Arabic numerals with three series of numbers: the first applying to the PCT request, the second applying to the part consisting of the patent description, the patent patent claims and the patent abstract, and the third applying to the drawings.

What language must be used for an international patent application?

The language in which an international patent application must be filed depends on the receiving Patent Office. Some receiving Patent Offices allow the patent applicant to choose between two or more languages. If the international patent application is filed in a language other than Chinese, English, French, German, Japanese, Russian or Spanish, that is, the languages in which international Patent applications may be published, or if the language in which the international patent application is filed is not accepted by the International Patent Searching Authority which is to carry out the international patent search, a translation of the international patent application will need to be furnished for the purposes of international patent search and/or international patent publication. All elements of the international patent application must normally be in the same language.

What is the form of the request?

The request must: (a) be made on a printed form to be filled in with the required indications; or (b) be presented as a computer print-out complying with the Administrative Instructions; or (c) be presented in the format of the print-out of the computer generated request prepared using the PCT-SAFE software. The request contains a petition for the international patent 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 patent applicant and the agent. The filing of a request constitutes the designation of all Contracting States bound by the PCT on the international filing date, for the grant of every kind of protection available and for the grant of both regional and national patents. The request should also contain, where applicable, a priority claim, an indication of the patent applicant’s choice of competent International Patent Searching Authority and a reference to any relevant earlier international, international-type or other search. The request must be signed.

Who may file an international patent application?

Any resident or national of a Contracting State may file an international patent application. Where there are two or more patent applicants, at least one of them must be a national or a resident of a Contracting State. The national law of any designated State may require that, for the purposes of the designation of that State, the patent applicants must be the inventors, for example, in the United States of America.

In any international patent application, different patent applicants may be indicated for the various designated States. This possibility is of great practical importance where the United States of America is designated. As indicated in paragraph 61, the patent applicant for the purposes of the designation of the United States of America must be the inventor. No such requirement exists for other States.

How are questions of residence and nationality determined?

The question whether the patent patent applicant is a resident or national of a Contracting State depends on the national law of that State and is decided by the Receiving Patent Office. In any case, however, possession of a real and effective industrial or commercial establishment in a Contracting State is considered residence in that State, and a legal entity constituted according to the national law of a Contracting State is considered a national of that State. Where a question of the patent applicant’s residence or nationality arises in connection with an international patent application filed with the International Patent Bureau as Receiving Patent Office, the International Patent Bureau will request the national Office of, or acting for, the Contracting State concerned to decide the question and will inform the patent applicant of such request. The patent applicant has the opportunity to submit arguments relating to the issue of residence or nationality directly to that national Office, which will decide the question promptly.

How must the patent applicant be identified?

The patent applicant must be identified by the indication of his name and address and by marking next to that indication, the check-box “This person is also inventor” in Box No. II, or “patent applicant and inventor” in Box No. III, where the patent applicant is also the inventor or one of the inventors, or the check-box “patent applicant only” where the patent applicant is not also the inventor or one of the inventors. Where the patent applicant is a corporation or other legal entity (that is, not a natural person), the check-box “patent applicant only” must be marked. Where the patent applicant is registered with the Receiving Patent Office, the number or other indication under which the patent applicant is so registered may also be indicated in Boxes No. II or III. The patent applicant’s nationality and residence must also be indicated.

How must names be indicated in the request?

The names of natural persons 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.

How must addresses be indicated in the request?

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.

When is the indication of a telephone number, a facsimile machine number or a teleprinter address recommended?

It is recommended that any telephone number, facsimile machine number and teleprinter (telex) address of the patent applicant named first in the request be given if no agent or common representative is indicated

Why and how must the nationality and residence of the patent applicant be indicated in the request?

This information is needed to determine whether the patent applicant is entitled to file an international patent application and also to determine the competence of the Receiving Patent Office. It must be provided by an indication of the names of the country of which the patent applicant is a national and of the country of which he is a resident. Where the country of residence is not indicated specifically but a country is indicated in the address, it will be assumed that the country of residence is the country indicated in the address.

Which of several patent applicants should be named first?

It is recommended that the patent applicant who will represent all the patent applicants and to whom notifications are to be sent be named first, since he will be considered to be the common representative of all the patent applicants if no common agent or common representative is appointed and if that patent applicant is entitled to file an international patent application with the Receiving Patent Office.

Who may be appointed to act as a patent agent?

Any person who can act as an agent before the Office which acts as Receiving Patent Office may be appointed as an agent for any international patent application filed with that Patent Office. Where the international patent application is filed with the International Patent Bureau as Receiving Patent Office, any person who has the right to practice before the national (or regional) Office of, or acting for, a Contracting State of which the patent applicant (or, if there are two or more patent applicants, any of the patent applicants) is a resident or national may be appointed as agent. An appointed agent who has the right to represent the patent applicant before the Receiving Patent Office is automatically also entitled to act before the International Patent Bureau, the International Patent Searching Authority and the International Preliminary Examining Authority.

What is the designation of States?

The designation of States is the indication of Contracting States in or for which the patent applicant may seek protection for his invention. For international patent applications filed on, or after, 1 January 2004, the filing of the request automatically constitutes:

(i) the designation of all Contracting States that are bound by the Treaty on the international filing date;
(ii) an indication that the international patent application is, in respect of each designated State for the grant of every kind of protection which is available by way of the designation of that State; and
(iii) an indication that the international patent application is, in respect of each designated State for the grant of a regional patent and a national patent.

p>As an exception to the automatic and all-inclusive designation of Contracting States, Germany, the Republic of Korea and the Russian Federation may be excluded from being designated. The reason for this exception is that these three States have notified the International Patent Bureau that the national law applied by their designated Offices contains provisions to the effect that the filing of an international patent application which contains the designation of that State and which patent claims the priority of an earlier national application having effect in the same State, has the result that the earlier national application ceases to have effect.

Is the procedure for extending a European patent to a country having an Extension Agreement with the European Patent Organisation available through the filing of an international patent application?

A European patent granted on an international patent application may, if the necessary conditions are met, be extended to a State having an Extension Agreement to that effect with the European Patent Organization. The procedure is available through the filing of an international patent application as the filing of the request constitutes the designation of all States, including the designation of the European Patent Office and the designation for a national patent of all States having concluded an Extension Agreement, and which are also PCT Contracting States.

Is it necessary to include any parent information in the international patent application? Where, when entering the national patent phase, a title (patent, certificate, inventor’s certificate) of addition is sought, or where the patent applicant wishes the international patent application to be treated as an application for a continuation or a continuation-in-part, for the purposes of the international patent search, that fact must be indicated following the name of the designated State, and the parent application must be identified.

How may the priority of an earlier application be claimed?

Priority date means, where the international patent application contains a priority claim, the filing date of the application whose priority is claimed, and, where it does not contain such a claim, the filing date of the international patent application. Where the international patent application contains two or more patent claims, priority date means the filing date of the earliest application whose priority is claimed. Any international patent application may contain a declaration claiming the priority of one or more earlier applications filed in or for any country party to the Paris Convention for the Protection of Industrial Property or in or for a member of the World Trade Organization (WTO) that is not party to that Convention. Note that where priority is claimed of an earlier filing in or for a WTO member which is not party to the Paris Convention, a PCT Contracting State that is not a Member of the WTO is not required to recognize the effects of such a priority claim. Any priority claim must be made in the request. The priority claim must contain the necessary indications which allow the earlier application to be uniquely identified. If the earlier application was a national application, it must indicate the country in which it was filed, the date on which it was filed and the number under which it was filed. Where the earlier application was a regional application, the priority claim must indicate the Patent Office with which it was filed; only where not all countries party to the regional patent treaty under which the earlier application was filed are also party to the Paris Convention for the Protection of Industrial Property (the Paris Convention) or are also members of the WTO must the priority claim indicate at least one country party to the Paris Convention or at least one member of the WTO for which that earlier regional application was filed. Where the earlier application was an international patent application, the priority claim must indicate the Receiving Patent Office with which it was filed.

What are the principles governing the right of priority for international patent applications?

The PCT makes no change to the provisions which govern the right of priority under the Paris Convention for the Protection of Industrial Property; WTO members are required to apply the Paris Convention.  In accordance with the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement). Since an international patent application has the effect in each designated State of a regular national application, it may claim priority from another application, and be used as the basis for a priority claim in a later application, just like any regular national application. So far as PCT procedures are concerned, the priority claim is particularly important because it establishes a priority date for the purposes of computing time limits under the PCT. The validity of a priority claim is not determined during the international patent phase (although the matter is taken into consideration for the purposes of establishing international preliminary reports on patentability (Chapter I, or II of the PCT)).

When and to whom must the priority document be furnished?

Before the expiration of 16 months from the priority date, a certified copy of the earlier patent application must be submitted by the patent applicant either to the International Patent Bureau or to the Receiving Patent Office (unless it has already been filed with the Receiving Patent Office together with the international patent application); any certified copy that reaches the International Patent Bureau after the expiration of 16 months from the priority date, but before the date of international patent publication of the international patent application, will be considered to have reached the International Patent Bureau on the last day of that 16-month period. The copy must be certified by the patent authority with which the earlier application was filed. Where that patent authority is the same patent office as the Receiving Patent Office, the patent applicant may, instead of submitting the certified copy, request the authority, before the expiration of 16 months from the priority date, to prepare and transmit the certified copy to the International Patent Bureau.

International Patent Searching Authority

Must an patent applicant indicate a choice of International Patent Searching Authority?

Where two or more International patent searching Authorities are competent to carry out the international patent search, the patent applicant must indicate the Authority chosen.

Why is a reference to an earlier search, if any, needed, and how must a reference to an earlier search be indicated?

Certain International patent searching Authorities refund part or all of the international patent search fee where the international patent search can be based wholly or partly on an earlier search, whether an international, international-type, or other search, made by them. Where the earlier search was made independently of a patent granting procedure, for instance, a standard search by the European Patent Office, a reference must be made to the date of the request for that search and the number given to the request by the International Patent Searching Authority.

How should the pages and lines be numbered?

The page number must be centered at the top or bottom of the sheet, but not in the 2 cm margin (that is, a page number, if at the top of the sheet, must be below the 2 cm margin, and if at the bottom of the sheet, above the 2 cm margin). Every fifth line of each sheet should be numbered in the right half of the left margin. The description must be typewritten or printed. The typing must be 1½ spaced and in dark indelible color so as to permit direct reproduction. The capital letters of the characters must be a minimum of 0.21 cm high.

How are chemical or mathematical formulae to be represented?

The description, the patent claims and the abstract may contain chemical or mathematical formulae. Such formulae may be written by hand or drawn if necessary but it is recommended that appropriate drafting aids or materials such as stencils or transfers be used. For practical reasons formulae may be grouped together on one or more sheets in the description and paginated with it. It is recommended in such cases that each formula be designated by a reference sign and the description should contain references to such formulae whenever necessary. Chemical or mathematical formulae may also be grouped together and be placed after the patent claims as drawings. In such a case, the chemical or mathematical formulae must be drawn to comply with the requirements for drawings and the sheets must be numbered as drawing sheets. Chemical or mathematical formulae must employ symbols in general use and must be drawn in such a way that they are completely unambiguous. Numerals, letters and signs which are not typed must be legible and identical in form in the various formulae, irrespective of the element of the international patent application in which they appear. Chemical or mathematical formulae appearing in the text of the international patent application must have symbols the capital letters of which are at least 0.21 cm high. Where they appear on sheets of drawings, these symbols must be at least 0.32 cm high. All mathematical symbols used in a formula which appear in a description or on sheets of drawings should be explained in the description, unless their significance is clear from the context. In any case, the mathematical symbols used may be collated in a list.

How are tables represented?

Tables may be grouped together in one or more sheets of the description and paginated with it. If two or more tables are necessary, each should be identified by a Roman numeral independently of the pagination of the description or drawings or of the figure numbering or by a capital letter, or by a title indicating its contents, or by some other means. Each line and column in a table should begin with an entry explaining what it represents and, if necessary, the units used. As far as possible, all tables should be set out upright on the sheets. Where the tables cannot be presented satisfactorily in an upright position, they may be placed sideways, with the top of the tables on the left-hand side of the sheet.

Can the description be amended during the international patent phase?

The description can be amended during the international patent phase only if the patent applicant files a demand for international preliminary examination. The description can also be amended during the national patent phase before each designated or elected Office. Different provisions apply to amendment of the patent claims in the international patent phase.

THE PATENT PATENT CLAIMS
How must patent claims be drafted?

The patent patent claims must “define the matter for which protection is sought.” Patent claims must be clear and concise. They must be fully supported by the description. As to the manner of claiming, the patent claims must, whenever appropriate, be in two distinct parts; namely, the statement of the prior art and the statement of the features for which protection is sought.

In principle, under the PCT, any dependent claim which refers to more than one other claim (“multiple dependent claim”) must refer to such patent claims in the alternative only, and multiple dependent patent claims cannot serve as a basis for any other multiple dependent claim. However, the national laws of most Contracting States permit a manner of claiming which is different from that provided for in the preceding sentence, and the use of that different manner of claiming is in principle also permitted under the PCT. For the purposes of those designated States where that different manner of claiming is not permitted, the patent applicant must decide which drafting style to adopt. If that different manner of claiming is used, amendments may need to be made to the patent claims during the national patent phase in those States which do not permit it. Moreover, the national Offices of such States, when they act as International patent searching Authorities, may indicate that a meaningful search could not be carried out if that different manner of claiming is used.

What is meant by the requirement of “unity of invention”?

An international patent application should be drafted so that the patent claims relate to only one invention or to a group of inventions so linked as to form a single general inventive concept. Since separate searches and examinations are required for distinctly different inventions, additional fees are required if the international patent search or international preliminary examination is to cover two or more inventions.

How is the requirement of unity of invention satisfied?

Unity of invention is present only when there is a “technical relationship” among the claimed inventions involving one or more of the same or corresponding “special technical features.” The expression “special technical features” means those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art. The determination whether a group of inventions is so linked as to form a single inventive concept is made without regard to whether the inventions are claimed in separate patent claims or as alternatives within a single claim. An initial determination of unity of invention based on the assumption that the patent claims avoid the prior art will be made before the prior art search but may be reconsidered on the basis of the results of the search.

May different categories of patent claims be combined in an international patent application?

The method for determining unity of invention contained in Rule 13 is construed as permitting, in particular, the inclusion of any one of the following combinations of patent claims of different categories in the same international patent application:

(i) in addition to an independent claim for a given product, an independent claim for a process specially adapted for the manufacture of the said product, and an independent claim for a use of the said product, or
(ii) in addition to an independent claim for a given process, an independent claim for an apparatus or means specifically designed for carrying out the said process, or
(iii) in addition to an independent claim for a given product, an independent claim for a process specially adapted for the manufacture of the said product and an independent claim for an apparatus or means specifically designed for carrying out the said process, it being understood that a process is specially adapted for the manufacture of a product if it inherently results in the product and that an apparatus or means is specifically designed for carrying out a process if the contribution over the prior art of the apparatus or means corresponds to the contribution the process makes over the prior art.

An apparatus or means is considered to be “specifically designed for carrying out” a claimed process if the contribution over the prior art of the apparatus or means corresponds to the contribution the process makes over the prior art. Consequently, it would not be sufficient that the apparatus or means is merely capable of being used in carrying out the claimed process.

What is permitted under the “Markush Practice”?

“Markush practice” is a single claim that defines alternatives of an invention—a common drafting practice for inventions in the chemical field. When the Markush grouping is for alternatives of chemical compounds, they are regarded as being of a similar nature where the following criteria are fulfilled:

(i) all alternatives have a common property or activity, and
(ii) (a) a common structure is present—that is, a significant structural element is shared by all of the alternatives, or
(b) in cases where the common structure cannot be the unifying criteria, all alternatives belong to a recognized class of chemical compounds in the art to which the invention pertains.

When dealing with alternatives, if it can be shown that at least one Markush alternative is not novel over the prior art, the question of unity of invention will be reconsidered by the examiner. Reconsideration does not necessarily imply that an objection of lack of unity will be raised.

Can both intermediate and final products be claimed?

The term “intermediate” is intended to mean intermediate or starting products. Such products have the ability to be used to produce final products through a physical or chemical change in which the intermediate loses its identity. Unity of invention should be considered to be present in the context of intermediate and final products where the following two conditions are fulfilled:

(i) the intermediate and final products have the same essential structural element, in that:

(a) the basic chemical structures of the intermediate and the final products are the same, or
(b) the chemical structures of the two products are technically closely interrelated, the intermediate incorporating an essential structural element into the final product, and

(ii) the intermediate and final products are technically interrelated, this meaning that the final product is manufactured directly from the intermediate or is separated from it by a small number of intermediates all containing the same essential structural element.

Unity of invention may also be considered to be present between intermediate and final products of which the structures are not known—for example, as between an intermediate having a known structure and a final product the structure of which is not known, or as between an intermediate of unknown structure and a final product of unknown structure. In order to satisfy unity in such cases, there must be sufficient evidence to lead one to conclude that the intermediate and final products are technically closely interrelated as, for example, when the intermediate contains the same essential element as the final product or incorporates an essential element into the final product.

Can the patent claims be amended during the international patent phase?

Yes, the patent claims may be amended on receipt of the international patent search report; they may also be amended during international preliminary examination if the patent applicant has filed a demand and during the national patent phase.

When is the inclusion of drawings required in the international patent application?

The international patent application must contain drawings when they are necessary for the understanding of the invention. Moreover where, without drawings being actually necessary for the understanding of the invention, the nature of the invention admits of illustration by drawings, the patent applicant may include such drawings and any designated Office may require the patent applicant to file such drawings during the national patent phase.

Perspectives, exploded views, sections and cross-sections, and details on a different scale are all considered to be drawings. Drawings also cover flow sheets and diagrams, such as functional diagrams and graphic representations of a given phenomenon which express the relationship between two or more parameters.

Where chemical or mathematical formulae and tables are included in the description, patent claims or abstract, they are not considered to be drawings and are thus not subject to the same requirements as drawings. However, such graphic forms may be submitted as drawings, in which case they are subject to the same requirements as drawings.

How must the drawings be presented?

Drawings must be presented on one or more separate sheets. They may not be included in the description, the patent claims or the abstract. They may not contain text matter, except a single word or words when absolutely indispensable. Any drawing meeting those requirements must be accepted in the national patent phase by the designated Patent Offices. A file reference may be indicated on each sheet of the drawings as for the description.

The drawings must be so presented as to admit of direct reproduction by photography, electrostatic processes, photo offset and microfilming, in any number of copies. Drawings must be on sheets of A4 paper (29.7 cm x 21 cm) which must be flexible, strong, white, smooth, non-shiny and durable. The sheets must be free from creases and cracks; they must not be folded. Each sheet must be reasonably free from erasures and must be free from alterations, overwriting and interlineations. Only one side of each sheet may be used. The usable surface of sheets must not exceed 26.2 cm x 17.0 cm. The sheets must not contain frames around the usable surface. The minimum margins which must be observed are: top and left side: 2.5 cm; right side: 1.5 cm; bottom: 1.0 cm.

Should figures of drawings be arranged in a particular manner?

All the figures constituting the drawings must be grouped together on a sheet or sheets without waste of space, but clearly separated from each other. However, figures should not be separated by lines. As far as possible, all figures of the drawings should be set out upright on the sheets. Where the drawings cannot be presented satisfactorily in an upright position, they may be placed sideways, with the tops of the drawings on the left-hand side of the sheet. Thus, a figure which is broader than it is high, may be set out so that the bottom of the figure lies parallel to and along the right-hand side of the sheet. In this case, if other figures are drawn on the same sheet, they should be set out in the same way, so that all the figures on a single sheet lie in the same position.

The drawings should contain as many figures as may be necessary to adequately show the claimed invention. The views may be plan, elevation, section, or perspective views; detail views of portions or elements, on a larger scale if necessary, may be used. Exploded views, with the separated parts of the same figure embraced by a bracket, to show the relationship or order of assembly of various parts, are permissible. One figure should not be placed upon or within the outline of another figure.

Where an invention concerns improvements to details of existing devices and machines, a general figure may be desirable to indicate where on the device or machine the improvement is situated, in order to ensure that the drawings are readily understood. If, for example, the invention relates to the fixing of an elastic diaphragm in a diaphragm pump, a figure—generally the first—may represent the entire pump, as improved by the invention, the details of which will then be given in the other figures. On the other hand, it would be unnecessary to represent the entire machine comprising this diaphragm, for example the automobile in which the diaphragm pump circulates the fuel.

It is sufficient to choose the views which are the most representative and contain the minimum of hidden parts, so that the object is completely and unambiguously defined by means of the smallest possible number of views. To this end, it is sometimes sufficient to replace the various views of an object by a single perspective view. The simplest view compatible with the desired result should be chosen.

Where figures on two or more sheets form in effect a single complete figure, the figures on the several sheets must be so arranged that the complete figure can be assembled without concealing any part of any of the figures appearing on the various sheets. Partial figures drawn on separate sheets must always be capable of being linked edge to edge, that is to say, no partial figure may contain parts of another partial figure. A very long figure may be divided into several parts placed one above the other on a single sheet. However, the relationship between the different parts must be clear and unambiguous. It is therefore recommended that a smaller scale figure be included showing the whole formed by the partial figures and indicating the positions of the parts shown.

How must drawings be numbered?

All sheets of drawings must be numbered in the center of either the top or the bottom of each sheet but not in the margin in numbers larger than those used as reference signs in order to avoid confusion with the latter. For drawings, a separate series of numbers is to be used. The number of each sheet of the drawings must consist of two Arabic numerals separated by an oblique stroke, the first being the sheet number and the second being the total number of sheets of drawings. For example, “2/5” would be used for the second sheet of drawings where there are five sheets in all and “1/1” would be used in the case of a single sheet.

Different figures on the sheets of drawings must be numbered in Arabic numerals consecutively and independently of the numbering of the sheets and, if possible, in the order in which they appear. The numbers of the figures should be preceded by the expression “Fig.,” whatever the language of the international patent application. Where a single figure is sufficient to illustrate the claimed invention, it should not be numbered and the abbreviation “Fig.” should not appear. Numbers and letters identifying the figures must be simple and clear and may not be used in association with brackets, circles, or inverted commas, except as regards partial figures intended to form one complete figure, irrespective of whether they appear on one or several sheets. In this case the complete figure may be identified by the same number followed by a capital letter (for example, Fig. 7B).

The different figures should preferably be set out, as far as possible, on each sheet in ascending numerical order from left to right and from top to bottom. If one of two figures illustrates on a larger scale a detail from the other, each figure should be numbered separately, and if possible, consecutively.

How should drawings be executed?

The drawings must be executed in durable, black, uniformly thick and well-defined lines and strokes. In all cases, the thickness of the lines and strokes must take into account the scale, nature, execution and perfect legibility of the drawing and of the reproductions. All lines in the drawings must, ordinarily, be drawn with the aid of a drafting instrument, except those which by their nature do not permit the use of such instruments, for example, irregular diagrams, ornamental structures and curved reference lines.

May lines of different thicknesses be used in the same drawing?

Lines and strokes of different thicknesses may be used in the same drawing where different thicknesses have a different meaning. One could, for instance, use:

– a continuous thick line for edging and outlining views and cross-sections;
– a continuous thin line for reference lines, hatching, outlining parts of adjoining elements, fictitious lines of intersection of surfaces connected by curved or rounded edges;
– a continuous thin line drawn freehand for delimiting views, part sections or interrupted views;
– a thin broken line made up of short dashes for hidden edges and contours;
– a dot-dash thin line for axes and planes of symmetry, extreme positions of movable elements, in front of a cross-section;
– a thin line terminating in two thick lines for outlines of cross-sections.

How should reference lines be shown?

Reference lines, also referred to as lead lines, that is, lines between the reference signs, for example, reference numerals, and the details referred to, may be straight or curved and should be as short as possible. They must originate in the immediate proximity of the reference sign and extend to the feature indicated. Reference lines for certain reference signs may be omitted. Reference signs of this type, which are not connected to anything, will then indicate the surface or cross-section on which they are placed. In such cases the reference sign may be underlined to make it quite clear that the line has not been left out by mistake. Reference lines must be executed in the same way as other lines in the drawing.

Arrows may be used at the end of the reference lines provided that their meaning is clear. They may indicate a number of points:

(i) a freestanding arrow indicates the entire section towards which it points;
(ii) an arrow touching a line indicates the surface shown by the line looking along the direction of the arrow;
(iii) arrows may also be used in appropriate cases to show the direction of movement.

How are cross-sections represented?

Where a figure is a cross-section on another figure, the latter should indicate the position of the section and may indicate the viewing direction by arrows at each end. In addition, in order to allow each sectional figure to be quickly identified, especially where several cross-sections are made on the same figure, each end of the cross-section line should be marked on the diagram with the same single Arabic or Roman numeral which identifies the figure in which the section is illustrated. A cross-section represents that part of an object which is situated on a cutting surface. In industrial drawings, the cross-section is that part of the object which is behind the cutting surface from the point of view of the person looking at it. Cutting surfaces are generally plane surfaces and if they are not, they must be defined precisely. Cross-sections must always follow the cutting surface, whatever it may be.

A cross-section must be set out and drawn in the same manner as a normal view whose parts in cross-section are hatched with regularly spaced parallel oblique strokes, the space between strokes being chosen on the basis of the total area to be hatched. Hatching should not impede the clear reading of the reference signs and reference lines. Consequently, if it is not possible to place reference signs outside the hatched area, the hatching may be broken off wherever reference signs are inserted. Certain types of hatching may be given a specific meaning. The hatching should be at a substantial angle to the surrounding axes or principal lines, preferably 45º. The various parts of a cross-section of the same item should be hatched in the same manner. The hatching of juxtaposed different elements should be angled in a different way. In the case of large areas, hatching can be confined to an edging drawn around the inside of the outline of the area to be hatched.

What should be the scale of figures of the drawings?

The scale of the figure should be such that all the essential details can be clearly distinguished in a linear reduction in size to two-thirds. In exceptional cases, where required, the scale of the drawing may be graphically represented. Indications such as “actual size” or “scale ½” on the drawings or in the description, are not permitted, since these lose their meaning with reproduction in different format.

Each element of each figure must be in proportion to each of the other elements in the figure, except where the use of a different proportion is indispensable for the clarity of the figure. As a preferred alternative to a difference in proportion within one figure for the purpose of achieving the necessary clarity, a supplementary figure should be added giving a larger scale illustration of the element of the initial figure. In such cases, it is recommended that the enlarged element shown in the second figure be surrounded by a finely drawn or “dot-dash” circle in the first figure pinpointing its location without obscuring the figure.

How should numbers, letters, reference signs and like indications be presented and applied to drawings?

Numbers, letters and reference signs and any other data given on the sheets of drawings, such as the numbering of figures, and of the sheets of the drawings, acceptable text matter, graduations on scales, etc., must be simple and clear, and not used in association with any brackets, inverted commas, circles or outlines whatsoever. Signs indicating minutes, seconds or degrees are permitted. Numbers, letters and reference signs should be laid out in the same direction as the diagram so as to avoid having to rotate the sheet. Such numbers, letters and reference signs should not be so placed in the closed and complex parts of the drawings as to interfere with a thorough comprehension of the same, and therefore should rarely cross or mingle with the lines. As a general rule, numbers, letters and reference signs should be placed as closely as possible to the part in question.

A minimum size of 0.32 cm is required for all numbers and letters used on the drawings so that their reduction in size to two-thirds remains easily legible. The Latin alphabet should normally be used for letters. The Greek alphabet is to be accepted, however, where it is customarily used, for example, to indicate angles, wavelengths, etc.

Reference signs are to be used in a manner which is consistent as between the description, patent claims and drawings. In particular, reference signs not mentioned in the description must not appear in the drawings, and vice versa. Features of a drawing should not be designated by a reference sign in cases where the feature itself has not been described. This situation may arise as a result of amendments to the description involving the deletion of pages or whole paragraphs. One solution would be to delete reference signs on the drawing which have been deleted in the description. Where for any reason a figure is deleted, all reference signs relating solely to that figure appearing in the description and patent claims should also be deleted.

The same features, when denoted by reference signs, must, throughout the international patent application, be denoted by the same signs. However, where several variants or embodiments of a claimed invention are described, each with reference to a particular figure, and where each variant contains features whose function is the same or basically the same, the features may, if this is indicated in the description, be identified by reference numbers made up of the number of the figure to which it relates followed by the number of the feature, which is the same for all variants, so that a single number is formed. For example, the common feature “15” would be indicated by “115” in Fig. 1, while the corresponding feature would be indicated by “215” in Fig. 2, thereby allowing the individual feature and the figure on which it is to be considered to be indicated at the same time. Complex cases involving many pages of drawings may be made easier to read if, when the individual variants or embodiments are described with reference to particular groups of figures, the common reference sign is prefixed by the number of the particular variant or embodiment to which it relates; however, this should, if used, be explained in the description.

May drawings contain text matter?

The drawings must not contain text matter, except a single word or words when absolutely indispensable, such as “water,” “steam,” “open,” “closed,” “section on AB” and in the case of electric circuits and block schematic or flow sheet diagrams, a few short catch words indispensable for understanding. Any words used must be so placed that if translated, they may be pasted over without interfering with any lines of the drawings.

May symbols be used in drawings?

Known devices may be illustrated by symbols which have a universally recognized conventional meaning and are generally accepted in the art provided no further detail is essential for understanding the subject matter of the claimed invention. Other signs and symbols may be used provided that they are not likely to be confused with existing conventional symbols, that they are readily identifiable, that is, simple, and providing that they are clearly explained in the text of the description. Different types of hatching may also have different conventional meanings as regards the nature of a material seen in cross-section.

Is the use of shading permitted?

The use of shading in figures is allowed provided this assists in their understanding and is not so extensive as to impede legibility. Shading may, for instance, be used to indicate the shape of spherical, cylindrical, conical elements, etc. Flat parts may also be lightly shaded. Such shading is allowed in the case of parts shown in perspective but not for cross-sections. Only spaced lines may be used for shading, not fully blacked out areas. These lines must be thin, as few in number as possible and they must contrast with the rest of the drawings.

May a photograph be presented instead of a drawing?

The PCT makes no provision for photographs. Nevertheless, they are allowed where it is impossible to present in a drawing what is to be shown (for instance, crystalline structures). Where, exceptionally, photographs are submitted, they must be black and white, must be on sheets of A4 size, and must respect the minimum margins and admit of direct reproduction. Color photographs are not accepted, nor are color drawings. Photographs are retained by the International Patent Bureau as part of the record copy.

May a list of reference signs used in the drawings be included in the description?

In the case of international patent applications dealing with complex subjects and incorporating a large number of drawings, a separate sheet listing all reference signs may be included at the end of the description as a part thereof. This list may take whatever form is appropriate and contain all the reference signs together with the designation of the features which they denote. This method could have the advantage of allowing an easier reference to the meaning of the various reference signs employed and understanding of the drawings.

Can the drawings be amended during the international patent phase?

The drawings can be amended during the international patent phase only if the patent applicant files a demand for international preliminary examination. The drawings can also be amended during the national patent phase.

THE PATENT ABSTRACT
How must the patent abstract be drafted?

The patent abstract must consist of a summary of the disclosure as contained in the description, the patent claims and any drawings. Where applicable, it must also contain the most characteristic chemical formula. The abstract must be as concise as the disclosure permits (preferably 50 to 150 words if it is in English or when translated into English). As a rule of thumb, it can be said that the volume of the text of the abstract, including one of the figures from the drawings, should not exceed what can be accommodated on an A4 sheet of typewritten matter, 1½ spaced. The patent abstract must be so drafted that it can efficiently serve as a scanning tool for the purposes of searching in the particular art.

The patent abstract should be primarily related to what is new in the art to which the invention pertains. Phrases should not be used which are implicit (for instance, “the invention relates to …”). If the invention is in the nature of a modification to an apparatus, process, product or composition, the abstract should be directed to the technical disclosure of the modification. If the invention is of a basic nature, the entire technical disclosure may be new in the art and the abstract should be directed to the entire disclosure. If an international patent application relating to a product, particularly a compound or composition, also contains significant disclosure of its method of preparation or use, this matter should also be abstracted. If the disclosure involves alternatives, the abstract should deal with the preferred alternative and identify the others if this can be done succinctly; if this cannot be done, it should mention that they exist and whether they differ substantially from the preferred alternative.

Where applicable, and provided the international patent application contains the information, the abstract should include at least the following: (1) if the invention is a machine, apparatus, or system, its organization and operation; (2) if the invention is an article, its method of making; (3) if the invention is a chemical compound, its identity and preparation; (4) if the invention is a mixture, its ingredients; (5) if the invention is a process, the steps. Extensive mechanical and design details of apparatus should not be given. The abstract must not contain statements on the alleged merits or value of the claimed invention or on its speculative application.

When must a figure be suggested to accompany the abstract?

Where the international patent application contains drawings, the patent applicant must indicate, in the check list of the request, the number of the figure in the drawings which the patent applicant suggests should be published with the abstract. The figure illustrating the abstract must be the figure which best characterizes the claimed invention and must be chosen from the drawings accompanying the international patent application. Only one figure should be indicated. The abstract may exceptionally be illustrated by more than one figure. If none of the figures is found useful for the understanding of the abstract, no figure need be indicated in the check list. The figure or figures that will accompany the abstract at the time the international patent application is published may not be included in the abstract. The abstract must be presented on a separate sheet which must appear after the patent claims and be numbered accordingly.

What happens if the patent abstract is missing or defective?

Where the Receiving Patent Office finds that the patent abstract is missing, it invites the patent applicant to furnish it within a time limit fixed in the invitation. The international patent application is considered withdrawn if no abstract is furnished to the Receiving Patent Office within the time limit fixed. Where the Receiving Patent Office has not invited the patent applicant to furnish an abstract, the International Patent Searching Authority establishes one. Where the abstract is established by the International Patent Searching Authority, the patent applicant may submit comments on it within one month from the date of mailing of the international patent search report.

OTHER FORMAL REQUIREMENTS
What other formal requirements does the international patent application have to meet?

The international patent application may not contain matter contrary to morality or public order, disparaging statements or obviously irrelevant or unnecessary matter. There are certain requirements as to the technical terminology and signs to be used (metric system, etc.).

In how many copies must an international patent application be filed?

An international patent application, and, where applicable, a translation of the international patent application, must be filed in one, two or three copies, depending on the requirements of the Receiving Patent Office. It is to be noted that there must eventually be three copies of every international patent application: one is kept by the Receiving Patent Office (the “home copy”), one is transmitted by the Receiving Patent Office to, and is kept by, the International Patent Bureau (the “record copy”), and one is transmitted by the Receiving Patent Office to, and kept by, the International Patent Searching Authority (the “search copy”). If less than the required number of copies is filed by the patent applicant, the Receiving Patent Office is responsible for preparing the additional copies and may charge a fee to the patent applicant.

Where the international patent application was filed in a language which is accepted by the Receiving Patent Office but not by the International Patent Searching Authority which is to carry out the international patent search, the patent applicant has to furnish a translation of the international patent application. In that case, the Receiving Patent Office forwards a copy of the international patent application in the language of filing (the “record copy”) to the International Patent Bureau, a copy (the “search copy” to the International Patent Searching Authority and retains one copy (the “home copy”). When the Receiving Patent Office receives the translation of the international patent application, it forwards one copy to the International Patent Bureau (the “record copy—translation”, keeps one copy for its files (the “home copy—translation” and forwards the third copy, together with a copy of the request (the “search copy—translation”) to the International Patent Searching Authority. If the translation is filed by the patent applicant in fewer than the required number of copies, the Receiving Patent Office is responsible for preparing the additional copies and may charge a fee to the patent applicant.

Where the international patent application was filed in a language which is accepted by the Receiving Patent Office and by the International Patent Searching Authority which is to carry out the international patent search but which is not also in a language of publication, the patent applicant has to furnish a translation of the international patent application. In that case, the Receiving Patent Office forwards a copy of the international patent application in the language of filing (the “record copy”) to the International Patent Bureau, a copy (the “search copy”) to the International Patent Searching Authority and retains one copy (the “home copy”). When the Receiving Patent Office receives the translation of the international patent application, it forwards one copy to the International Patent Bureau (the “record copy—translation”) and keeps one copy for its files (the “home copy”). No copy of the translation of the international patent application will therefore is forwarded to the International Patent Searching Authority by the Receiving Patent Office. If the translation is filed by the patent applicant in fewer than the required number of copies, the Receiving Patent Office is responsible for preparing the additional copy and may charge a fee to the patent applicant.

Where the International Preliminary Examining Authority is not part of the same national Office or intergovernmental organization as the International Patent Searching Authority, the International Patent Bureau will, promptly upon receipt of the international patent search report or, if the demand was received after the international patent search report, promptly upon receipt of the demand, send a copy of the international patent application and the international patent search report together with a copy of the written opinion of the International Patent Searching Authority to the International Preliminary Examining Authority. Where neither the language in which the international patent application was filed nor the language in which the international patent application is published is accepted by the International Preliminary Examining Authority that is to carry out the international preliminary examination, the patent applicant must furnish with the demand a translation of the international patent application into a language which is both a language accepted by that Authority and a language of publication. No such translation is required where the International Patent Searching Authority and the International Preliminary Examining Authority are part of the same national Office or intergovernmental organization.

FEES
What fees are due in respect of an international patent application?

There are three kinds of fee which must be paid in connection with every international patent application.

(a) The “transmittal fee” is fixed by, and accrues to, the Receiving Patent Office for the performance of its tasks in connection with the receipt and checking of the international patent application, and for the transmittal of copies of it to the International Patent Bureau and the International Patent Searching Authority.
(b) The “search fee” is fixed by, and accrues to the benefit of, the International Patent Searching Authority for the carrying out of the international patent search and the establishment of the international patent search report and the written opinion of the International Patent Searching Authority.
(c) The “international filing fee” is fixed in the Schedule of Fees annexed to the PCT Regulations and accrues to the International Patent Bureau for the performance of various tasks, including the publication of the international patent application and, where applicable, the issuance on behalf of the International Patent Searching Authority of the international preliminary report onpatentability (Chapter I of the PCT) and the communication of various notifications to the patent applicant, the Receiving Patent Office, the International Patent Searching Authority, the International Preliminary Examining Authority, and the designated and elected Offices.

To whom are the fees payable? All three kinds of fees are payable to the Receiving Patent Office with which the international patent application is filed. The Receiving Patent Office then transmits the search fee to the International Patent Searching Authority and the international fee to the International Patent Bureau.

What is the currency in which the fees are payable?

Generally, the fees are payable in the currency of the country in which the Receiving Patent Office is located.

What are the amounts of the fees?

Annex C and, for the search fee, Annex D indicate the amounts of the fees. Where the patent applicant has the choice between two or more International patent searching Authorities, the amount of the search fee depends on which International Patent Searching Authority is chosen.

What fee reductions are available?

An patent applicant who is a natural person and who is a national of and resides in a State whose per capita national income is below 3,000 US dollars (according to the average per capita national income figures used by the United Nations for determining its scale of assessments for the contributions payable for the years 1995, 1996 and 1997) is entitled, in accordance with the Schedule of Fees annexed to the PCT Regulations, to a reduction of 75% of certain fees including the international filing fee. In addition, an patent applicant who qualifies for the 75% reduction in the international filing fee will not have to pay the transmittal fee in respect of an international patent application filed with the International Patent Bureau as Receiving Patent Office. The same applies (i.e. the 75% reduction and no transmittal fee to be paid if filing is made with the International Patent Bureau as Receiving Patent Office) for an patent applicant, whether a natural person or not, who is a national of and resides in a State that is classed as a least developed country by the United Nations. If there are several patent applicants, each must satisfy one or the other of the above-mentioned criteria. The reduction of those fees will be automatically available to any patent applicant (or patent applicants) who is (or are) so entitled on the basis of the indications of name, nationality and residence given in the request. The fee reduction will be available even if one or more of the patent applicants are not from PCT Contracting States, provided that each of them satisfies the above-mentioned criteria and that at least one of them is a national or resident of a PCT Contracting State and thus is entitled to file an international patent application. Note that if both the reduction for electronic filing of an international patent application and the 75% reduction of the international filing fee are applicable, the 75% reduction is calculated after the reduction for electronic filing of an international patent application.

An patent applicant who files an international patent application is entitled to a reduction in the international filing fee provided that:

(i) — the request is presented as a computer print-out prepared using the PCT-SAFE software (“request in PCT-EASY format”);
— the request in PCT-EASY format is filed together with a computer diskette, prepared using the PCT-SAFE software, containing a copy in electronic form of the data contained in the request and of the abstract (“PCT-EASY diskette”); and
— the international patent application is filed with a Receiving Patent Office which is prepared to accept the filing of international patent applications containing the request in PCT-EASY format together with the PCT-EASY diskette; or
(ii) the international patent application is filed in electronic form with a Receiving Patent Office which is prepared to accept the filing of international patent applications in electronic form and in compliance with Part 7, Annex F or the basic common standard.

The reduction is 100 Swiss francs or the equivalent in the currency in which the international filing fee is paid to the Receiving Patent Office in case (i) above. In case (ii) above, the reduction is 200 Swiss francs or the equivalent where the text of the description, patent claims and abstract is not in character coded format and is 300 Swiss francs or the equivalent where the text of the description, patent claims and abstract is in character coded format. Similarly, a reduction of the search fee charged by certain International patent searching Authorities may be available to patent applicants from the States mentioned above.

When are the fees due? All fees may be paid at the same time, and, if they are paid upon filing of the international patent application by the Receiving Patent Office, no problems can arise. However, all fees can be paid as much as one month from the date of receipt of the international patent application by the Receiving Patent Office. The dates on which payments are deemed to have been received are determined by the Receiving Patent Office.The latter applies the same rules as are applied in the case of payments for national applications.

What happens if the amounts of the fees are changed?

Where the amount of the international filing fee or of the search fee, in the currency in which the fee is payable, changes, the new amount must be paid as from the date of its entry into force. However, where the amount of any such fee changes between the date on which the international patent application was received and the date of payment, the amount payable is the amount applicable on the date of receipt of the international patent application. This system allows the patent applicant to pay all the fees for the international patent application, within the one-month period, on the basis of the amounts applicable on the date on which the application was filed with the Receiving Patent Office.

What happens if the fees are not paid or not paid in full?

Where, within the time they are due, the patent applicant has not paid any or all of the fees, the Receiving Patent Office invites the patent applicant to pay the missing amount, together with a late payment fee, within a time limit of one month from the date of the invitation. If the patent applicant pays the amount (including the late payment fee) specified in the invitation, the deficiency in payment has no consequences for the international patent application. The amount of the late payment fee is 50% of the missing amount or, if that 50% is less than the transmittal fee, an amount equal to the transmittal fee; but the amount of the late payment fee may not exceed the amount of 50% of the international filing fee referred to in item 1 of the Schedule of Fees, not taking into account any fee for each sheet of the international patent application in excess of 30 sheets.

Where, within the time by which they are due, the patent applicant has not paid any or all of the fees, any payment relating to the missing amount must be considered to have been received within the time by which those fees are due, if the payment is received by the Receiving Patent Office before that Office sends the invitation, referred to in the preceding paragraph, to pay the missing amount. If the transmittal fee, the international filing fee and the search fee are not paid in the prescribed currency and within the prescribed time limits, including the time limit set in the invitation from the Receiving Patent Office to pay the missing amount together with the late payment fee (see paragraph 211), the international patent application is considered withdrawn, and the Receiving Patent Office promptly informs the patent applicant accordingly. However, any payment must be considered to have been received before the expiration of the applicable time limit if it is received by the Receiving Patent Office before that Office makes the applicable declaration, under Article 14(3), that the international patent application is considered withdrawn.

If the amounts paid do not cover the transmittal fee (if applicable), the international filing fee and the search fee (if applicable), the moneys paid will be allocated as specified by the patent applicant or, in the absence of such specification, as prescribed by the Administrative Instructions by the Receiving Patent Office, which promptly notifies the patent applicant accordingly.

In what cases are fees refunded?

There is no rule in the PCT concerning the possibility of asking for a refund of the transmittal fee. The search fee and the international filing fee are refunded where, due to prescriptions concerning national security, the international patent application is not treated as such, or where the Receiving Patent Office refuses to accord an international filing date to the international patent application. Such refusal occurs, generally speaking, where the international patent application is defective in certain respects. The Receiving Patent Office will also refund the international filing fee or the search fee to the patent applicant if the international patent application is withdrawn or considered withdrawn before the transmittal of the record copy to the International Patent Bureau or the transmittal of the search copy to the International Patent Searching Authority, as the case may be.

Most International patent searching Authorities will refund part or all of the search fee if the international patent application is withdrawn or considered withdrawn after transmittal of the search copy but before the start of the international patent search. Moreover, where the international patent search can be based wholly or partly on an earlier search made by the International Patent Searching Authority, that Authority makes a full or partial refund of the search fee. Particulars of an earlier search on which it is desired that the international patent search be based should be given in the request.