MPEP § 1864
Once applicant has filed an international application under Chapter I of the PCT, applicant has the right to file a demand for preliminary examination under Chapter II of the Treaty. The use of the term "Demand" distinguishes Chapter II from the "Request" under Chapter I. It is not possible to file a demand unless a proper Chapter I "Request" for an international application has been filed. Chapter I affords applicant the benefit of an international search, which includes an international search report and a written opinion established by the International Searching Authority. The filing of a demand affords applicant examination of the application and allows applicant to file amendments to the description, claims and drawings to correct any defects, respond to any observations, or address negative findings with respect to any of the claims because of a lack of novelty, inventive step (non-obviousness) or industrial applicability as described in PCT Article 33(2) - (4) mentioned in the written opinion (Form PCT/ISA/237) established by the International Searching Authority. Thus, examination enables applicant to attempt to obtain a positive international preliminary examination report, which in some elected Offices is used as a basis for the issuance of a patent or acceleration programs, e.g., Patent Prosecution Highway.
The demand should be filed on Form PCT/IPEA/401 along with the fee calculation sheet. The form is available free of charge on WIPO’s website at www.wipo.int/pct/en/forms/index.html.
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The applicant may make amendments at the time of filing the Demand. The applicant may also make amendments within the time limit set by the International Preliminary Examining Authority for reply to any notification under § 1.484(b) or to any written opinion. Any such amendments must be made in accordance with PCT Rule 66.8.
Under PCT Article 34(2)(b), the applicant has a right to amend the claims, the description, and the drawings in the application before the International Preliminary Examining Authority (IPEA) before the international preliminary examination report is established. The amendment may be filed with the demand (PCT Article 34 ), within the period for reply to the written opinion of the International Searching Authority (ISA), or within the period for reply to the written opinion of the IPEA.
See MPEP § 1871 regarding the processing of amendments filed prior to or at the start of international preliminary examination. See MPEP § 1878.02 regarding amendments filed in reply to the written opinion of the ISA or IPEA.
The applicant must submit a replacement sheet for every sheet which, on account of an amendment, differs from the sheet previously filed. The amendment must be submitted with an accompanying letter which explains the difference between the replaced sheet and the replacement sheet and which preferably explains the reasons for the amendment. In addition, the letter must indicate the basis for the amendment in the application. The basis for the amendment must always refer to the application (description, claims, drawings) as originally filed, even if multiple amendments were made during the international phase. When filing amendments to the claims, a complete set of claims in replacement of the claims as originally filed (or previously amended under Article 19 ) shall be submitted. For an example of how the basis for the amendment should be indicated, see MPEP § 1853. Where the amendment consists in the deletion of passages or in minor alterations or additions, the alterations or additions may be made on a copy of the relevant sheet of the international application, provided that the clarity and direct reproducibility of that sheet are not adversely affected. No replacement sheet is required where the amendment results in the cancellation of an entire sheet; such an amendment may be communicated in a letter which preferably explains the reasons for the amendment.
Where the international application was not filed in the language of publication, any amendments under Article 34 and any accompanying letter (as well as any letter accompanying Article 19 amendments) must be in the language of publication. Where the international preliminary examination is carried out on the basis of a translation of the international application, any amendments under Article 34 and any amendments under Article 19, which are to be taken into account, and any accompanying letter must be in the language of that translation. Where such amendments have been or are filed in another language, a translation of the amendments into the language in which the international preliminary examination is carried out must also be furnished. No fee is payable in respect of filing any amendments under Article 34(2)(b). If the amendments or accompanying letter are not in the required language, the International Preliminary Examining Authority will invite the applicant to furnish them within a reasonable time limit. If the applicant fails to furnish the amendments and/or the accompanying letter within the time limit set in the invitation, the International Preliminary Examining Authority shall not take such amendments into account for the purposes of the international preliminary examination.
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The right to make a demand under Article 31(2) shall exist if the applicant making the demand or, if there are two or more applicants, at least one of them is a resident or national of a Contracting State bound by Chapter II and the international application has been filed with a receiving Office of or acting for a Contracting State bound by Chapter II.
Where the international application is filed with the International Bureau as receiving Office under Rule 19.1(a)(iii), the International Bureau shall, for the purposes of Article 31(2)(a), be considered to be acting for the Contracting State of which the applicant is a resident or national.
If the applicant does not have the right to make a demand or, in the case of two or more applicants, if none of them has the right to make a demand under Rule 54.2, the demand shall be considered not to have been submitted.
If there is a sole applicant, he or she must be a resident or national of a Contracting State bound by Chapter II of the PCT. If there are two or more applicants, it is sufficient that one of them be a resident or national of a Contracting State bound by Chapter II, regardless of the elected State(s) for which each applicant is indicated. Only applicants for the elected States are required to be indicated in the Demand. The detailed requirements for the various indications required in connection with each applicant (name and address, telephone number, facsimile machine number, nationality and residence) are the same as those required under PCT Rule 4 in connection with the Request. Note that any inventor who is not also an applicant is not indicated in the Demand.
If the recording of a change in the name or person has been requested under PCT Rule 92bis.1 before the Demand was filed, it is the applicant(s) of record at the time when the Demand is filed who must be indicated in the Demand.
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The filing of a demand shall constitute the election of all Contracting States which are designated and are bound by Chapter II of the Treaty on the international filing date (PCT Rule 53.7 ). For demands filed before January 1, 2004, only those eligible states pursuant to PCT Article 31 indicated as being elected are elected. Only PCT member states which have ratified or acceded to Chapter II and which were designated in the Request may be elected under Chapter II. The Assembly has taken no action to allow persons who are residents or nationals of a State not party to the PCT or not bound by Chapter II to make a Demand under Article 31(2)(b).
Any agent entitled to practice before the receiving Office where the international application was filed may represent the applicant before the international authorities ( PCT Article 49 ).
If for any reason, the examiner needs to question the right of an attorney or agent to practice before the International Preliminary Examining Authority (IPEA), the USPTO roster of registered attorneys and agents should be consulted. If the international application was filed with a receiving Office other than the United States, Form PCT/IPEA/410 may be used by the requesting IPEA to ask the receiving Office with which the international application was filed, whether the agent named in the international application has the right to practice before that Office.
The PCT Article and Regulations governing the right to practice are PCT Article 49 and PCT Rule 83.