New book: PCT Forms and PCT Docketing

I’m working on a new book.  It’s entitled Oppedahl on PCT Forms and PCT Docketing.  Right now it is in what I might term beta testing.  The book is version 0.8.  I am providing copies of the book to some folks free of charge in the hopes that they will take a look at the book and maybe make suggestions or corrections.  Then I will finalize the book and release it for general sale.

The basic concept was inspired by a comment from a nice person at the USPTO (you know who you are).  This person wondered if there might be interest in a live in-person training program in which the presenters would review, one by one, the various forms that are frequently encountered in PCT practice.  And indeed that is the main point of this book.  

Here is a list of the forms discussed in version 0.8 of this book.  Are there forms that you think should be added to the book?  Please post a comment below.

  • PCT powers of Attorney 
    • Form PCT – Power of Attorney 
    • Form PCT – General Power of Attorney 
  • Forms Relating to the Receiving Office 
    • Form PCT/RO/101 – the Request 
    • Form PCT/RO/102 – Notification Concerning Payment of Prescribed Fees 
    • Form PCT/RO/103 – Invitation to Correct the Purported International Application 
    • Form PCT/RO/104 – Notification that the Purported International Application is not and Will not Be
    • Treated as an International Application 
    • Form PCT/RO/105 – Notification of the International Application Number and of the International Filing Date 
    • Form PCT/RO/106 – Invitation to Correct Defects in the International Application 
    • Form PCT/RO/107 – Invitation Relating to Certain Parts of the International Application that Are, or Appear to Be, Missing 
    • Form PCT/RO/108 – Invitation to Request Rectification 
    • Form PCT/RO/109 – Notification of Decision Concerning Request for Rectification 
    • Form PCT/RO/110 – Invitation to Correct Priority Claim and/or Notification of Possibility to Request Restoration of the Right of Priority 
    • Form PCT/RO/111 – Notification Relating to Priority Claim 
    • Form PCT/RO/113 – Request for the Recording of a Change (PCT Rule 92bis.1) 
    • Form PCT/RO/114 – Notification on Decision of Confirmation of Incorporation by Reference of Element or Part 
    • Form PCT/RO/115 – Notification of Intention to Make Declaration that International Application Considered Withdrawn 
    • Form PCT/RO/117 – Notification that International Application Considered to be Withdrawn 
    • Form PCT/RO/132 – Communication in Cases for which no other form is Applicable 
  • Forms Relating to the International Bureau 
    • Form PCT/IB/301 – Notification of Receipt of Record Copy 
    • Form PCT/IB/304 – Notification Concerning Submission, Obtention or Transmittal of Priority Document 
    • Form PCT/IB/306 – Notification of the Recording of a Change 
    • Form PCT/IB/307 – Notification of Withdrawal of International Application or Designations 
    • Form PCT/IB/308 (First Notice) – First Notice Informing the Applicant of the Communication of the International Application (To Designated Offices Which do not Apply the 30 Month Time Limit Under Article 22(1)) 
    • Form PCT/IB/308 (Second and Supplementary Notice) — Second and Supplementary Notice Informing the Applicant of the Communication of the International Application (To Designated Offices Which Apply the 30 Month Time Limit Under Article 22(1)) 
    • Form PCT/IB/314 – Invitation to Request Rectification 
    • Form PCT/IB/315 – Notification of Decision Concerning Request for Rectification 
    • Form PCT/IB/316 – Invitation to correct priority claim and/or notification of possibility to request restoration of the right of priority 
    • Form PCT/IB/345 – Communication in Cases for which No Other Form is Applicable 
    • Form PCT/IB/346 – Notification Concerning the Filing of Amendments of the Claims 
    • Form PCT/IB/368 – Notification of Transmittal of Demand to the Competent International Preliminary Examining Authority 
    • Form PCT/IB/371 – Notification Relating to Declaration Made Under PCT Rule 4.17 
    • Form PCT/IB/373 – International Preliminary Report on Patentability (Chapter I of the Patent Cooperation Treaty) 
  • Forms Relating to the International Searching Authority 
    • Form PCT/ISA/202 – Notification of Receipt of Search Copy 
    • Form PCT/ISA/203 – Declaration of Non-Establishment of International Search Report 
    • Form PCT/ISA/206 – Invitation to Pay Additional Fees and, Where Applicable, Protest Fee 
    • Form PCT/ISA/210 – International Search Report 
    • Form PCT/ISA/216 – Invitation to Request Rectification 
    • Form PCT/ISA/217 – Notification of Decision Concerning Request for Rectification 
    • Form PCT/ISA/220 – Notification of Transmittal of the International Search Report and the Written Opinion of the International Searching Authority, or the Declaration 
    • Form PCT/ISA/225 – Invitation to Furnish Nucleotide and/or Amino Acid Sequence Listing and to Pay, Where Applicable, Late Furnishing Fee 
    • Form PCT/ISA/237 – Written Opinion of the International Searching Authority 
  • Forms Relating to the International Preliminary Examining Authority 
    • Form PCT/IPEA/402 – Notification of Demand by Competent International Preliminary Examining Authority 
    • Form PCT/IPEA/403 – Notification concerning Payment of the Preliminary Examination and Handling Fees 
    • Form PCT/IPEA/405 – Invitation to Restrict or Pay Additional Fees, and, Where Applicable, Protest Fee 
    • Form PCT/IPEA/408 – Written Opinion of the International Preliminary Examining Authority 
    • Form PCT/IPEA/409 – International Preliminary Report on Patentability (Chapter II of the Patent Cooperation Treaty) 
    • Form PCT/IPEA/411 – Invitation to Request Rectification 
    • Form PCT/IPEA/412 – Notification of Decision Concerning Request for Rectification 
    • Form PCT/IPEA/416 – Notification of Transmittal of International Preliminary Report on Patentability 
  • Forms Relating to the DO/EO/US 
    • Form PTO-1390 – Transmittal Letter to the United States Designated/Elected Office (DO/EO/US) Concerning a Submission Under 35 U.S.C. 371 
    • Form PCT/DO/EO/903 – Notice of Acceptance of Application Under 35 U.S.C. 371 and 37 CFR 1.495 
Posted in PCT |

18 thoughts on “New book: PCT Forms and PCT Docketing

  1. In my personal opinion, I think it would be useful to add and discuss the various declarations and why some of them are really useful in certain situations.

  2. Is your proposal only for a ‘hardcopy’ of your book, or will you be providing an e-book version too? As a disabled person who finds it very difficult to turn pages in a traditional ‘hardcopy’ book, but still works entirely on-line as a UK Patent Attorney, a PDF version of your book would be of real benefit.

    • The problem here is that the source materials are A4-sized forms. I have already shrunk them down a little to smaller than 8.5 by 11 size to cram them into an 8.5 by 11 trim size book. I think if I were to try to make this into an e-book (the point being that most e-books have screens that are much much smaller than 8.5 by 11) the rendering of the images would be a disaster.

  3. I’d buy it. And I’d suggest it to someone I know who is studying for the patent bar in the US. Back in the day, studying for the PB myself, I found that after studying 35 USC, 37 CFR, and MPEP, studying PTO forms was a good way to cement knowledge. if I didn’t understand something on a form, I’d better look it up. Same here for knowing the PCT.

  4. This would be an awesome resource to have! I’d be happy to beta read it for you so you could get an IP Assistant’s perspective. 😉

  5. I reviewed your forms cannot think of anything but agree with above regarding the declarations. Please let us know when it will be available for purchase as I am very interested.

  6. I think that this would be a valuable resource, and I second the vote for electronic access or e-book formatting. I’d be happy to review a beta copy if it would help!

  7. ◦Form PCT/RO/110 – Invitation to Correct Priority Claim and/or Notification of Possibility to Request Restoration of the Right of Priority
    ◦Form PCT/ISA/206 – Invitation to Pay Additional Fees and, Where Applicable, Protest Fee

    I’d like to hear more about these two forms, in particular. More specifically, regarding the first form, what to do if you believe you have received it in error. Additionally, is there anything comparable to a “Statement of Summary of Interview” as filed with the USPTO, for PCT Applications? If you call an Examiner who says that they erroneously issued an Invitation, and says to disregard, how can you be 100% sure your application will not go abandoned from failure to respond?

    Regarding the second form, is there a way to ask the Examiner to search the second “Group” instead of the identified “main Group”?

    • re ISA/206:
      Ashley, normally, an ISA will search what they deem the 1st invention, and then ask you to pay for the 2nd and subsequent inventions.
      However, I have seen ISA’s which don’t do that. They tell you they consider the application to contain xx inventions and to let them know which one the applicant wants searched. Kind of nice, really, but I think that was a one-off. Unfortunately, I can’t remember the circumstances.

  8. This is awesome!!! I agree with Sharon too – a discussion on the different Declarations and when they should be used would be great!

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