Getting The Written Report Issued

One extremely important point about PCT practice is that a Written Report will only be issued where the Chapter II fee is paid. This has only come up recently because substantially everyone used to pay Chapter II to extending foreign filing to 30/31 months. Now that the rule has changed, and many foreign countries allow 30/31 month filing without payment of Chapter II fees, there is a tendency to skip Chapter II fee. The punishment for doing so is that the PCT never issues the written report. The official reasoning is that the U.S. made a reservation to that effect under PCT Article 64(3)(a) (see PCT Articles 21(2)(a)) and 64(3)(a)).

An equally important point is that the PCT will only issue a Written Report where the applicant designated states other than the United States. This situation occurs where an applicant files PCT first to secure all the benefits identified in Chapter IX, section C(1) above, but is really only interested in United States prosecution, and names the United States as the only country. The Search Report is issued right away, and the applicant is very happy about having followed our advice. But then he waits, and waits - never to get the Written Report. The solution, of course, is to name another state or region in the PCT Chapter I filing, usually Canada, Mexico, Japan, or EPO.