Attachment 3b_isa206_instructions.pdf

Attachment 3 - rev Apr 17 1

Attachment 3 - Instructions on Completing Form PCT/ISA/206

This form is used where multiple inventions are claimed, that is, where there is a lack of unity of invention. The purpose of the form is to invite the applicant to pay additional fees for the search of additional inventions. The Contractor will always search the first mentioned invention.

206-1 Enter the name and address of the agent, common representative or special correspondence address found in Box No IV of the PCT Request (form PCT/RO/101), hereafter referred to as the PCT Request, shown in data field 7.

While the agent’s name will be indicated by “LAST NAME, First name Middle Initial (if applicable)” format in data field 7, the name should be entered as “First Name Middle Initial (if applicable) Last Name” format on the form. For example, if the name is indicated in data field 7 as SMITH, John J. in data field 7, it would be entered in field 206-1 as” John J. Smith”.

If nothing is listed in data field 7 in Box No IV of the PCT Request, enter the name and address of the first applicant with “US” or “United States of America” listed as the “State (that is, country) of nationality” or the “State (that is, country) of residence”. Start with data field 5, checking specifically in data field 5a and data field 5b for the “US” indication, and continuing with data field 6,specifically checking data field 6a and data field 6b, followed by data field 8, specifically checking data field 8a and data field 8b, data field 9, specifically checking data field 9a and data field 9b, etc.

For a non-US origin international application, that is, an international application which has an international application number that does not begin with “PCT/US”, enter the name and address listed in data field 7 in Box No IV of the PCT Request. If that space is blank, enter the name and address of the applicant listed in Box No II of the PCT Request in data field 5.

206-2 Leave this field blank.

206-3 Enter the applicant’s or agent's file reference. The file reference is found on the

PCT Request in data field 3. If nothing is indicated in data field 3, leave this space blank.

206-4 Enter the international application number exactly as indicated on the PCT

Request in data field 1.

206-5 Enter the international filing date exactly as it appears on the PCT Request in data field 2.

206-6 Enter the applicant's name exactly as it appears on the PCT Request in data field

5.

206-7 Enter the number of groups of inventions claimed in the international application.

206-8 For each group of inventions, enter the group number and the claim numbers that correspond to that group of inventions. For example, “Group 1: claims 1-5;

Group 2: claims 6-10; Group 3: claims 11-15;” etc.

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If there is insufficient space to list all the groups, enter “see attachment” in this space and enter the information in field 206-23.

206-9 Enter the reason(s) why the identified inventions are not considered to comply with the unity of invention requirements. For detailed guidance, see Chapter 10 of the PCT International Search and Preliminary Examination Guidelines (PCT ISPE Guidelines) posted on the Internet at http://www.wipo.int/pct/en/texts/gdlines.htm and MPEP Section 1850.

If there is insufficient space to complete the entire reason(s) field, enter “see attachment” in this space and enter the information in field 206-23.

206-10 Do not mark this box.

206-11 Enter an “X” in the check box.

206-12 Enter the claim numbers for Group 1.

206-13 Enter the current fee for the search of additional inventions. This information is posted on the USPTO Internet site at http://www.uspto.gov/main/howtofees.htm under fee code 1604 “Supplemental search per additional invention”.

206-14 Enter the number of additional inventions.

This is the total number of inventions as indicated in item 206-7 minus Group I.

206-15 Multiply the fee indicated in field 206-13 times the number of additional inventions indicated in field 206-14 and enter the total amount of additional fees.

206-16 Do not mark this box.

206-17 Enter an “X” in the check box where one or more claims have been found to be unsearchable and thus are not included with any invention.

A claim may be unsearchable for any of the following reasons:

1) the claim is directed to subject matter that the USPTO would not search in a

US patent application. See MPEP sections 706.03(a), 1843.02, 2105 and 2106 and Chapter 9 of the PCT ISPE Guidelines, especially paragraphs 9.01-9.16, A9.07[1] and A9.15[1].

2) the claim is so poorly supported by the disclosure that no meaningful search can be made. See MPEP section 1843.03. For example, a claim is directed to a specific amino acid or nucleotide acid sequence but applicant did not provide a computer readable form of that sequence after receiving an invitation to do so;

3) the claim is so unclear as to render it unintelligible. See MPEP section

1843.03;

4) the claim is an improper multiple dependent claim. A multiple dependent claim is improper under PCT Rule 6.4(a) if it depends from another multiple dependent claim or if it is not written in the alternative. See MPEP section http://www.wipo.int/pct/en/texts/gdlines.htm http://www.uspto.gov/main/howtofees.htm

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608.01(n) subsection A for examples of acceptable multiple dependent claim wording and subsection B for examples of unacceptable multiple dependent claim wording.

If all claims are searchable, do not mark this box.

206-18 Where one or more claims have been found to be unsearchable, enter the claim numbers in this field.

If all claims are searchable, leave this field blank.

206-19 Field will be populated by USPTO.

206-20 Field will be populated by USPTO.

206-21 Field will be populated by USPTO.

206-22 Leave this field blank.

206-23 Use this space to complete items 206-8 and 206-9, as necessary.