37 C.F.R. Subpart C—International Processing Provisions
Title 37 - Patents, Trademarks, and Copyrights
Authority: Pub. L. 94–131, 89 Stat. 685; Pub. L. 99–616, 35 U.S.C. 351 through 376.
Source: 43 FR 20466, May 11, 1978, unless otherwise noted.
(a) The abbreviation PCT and the term Treaty mean the Patent Cooperation Treaty. (b) International Bureau means the World Intellectual Property Organization located in Geneva, Switzerland. (c) Administrative Instructions means that body of instructions for operating under the Patent Cooperation Treaty referred to in PCT Rule 89. (d) Request, when capitalized, means that element of the international application described in PCT Rules 3 and 4. (e) International application, as used in this subchapter is defined in §1.9(b). (f) Priority date for the purpose of computing time limits under the Patent Cooperation Treaty is defined in PCT Art. 2 (xi). Note also §1.465. (g) Demand, when capitalized, means that document filed with the International Preliminary Examining Authority which requests an international preliminary examination. (h) Annexes means amendments made to the claims, description or the drawings before the International Preliminary Examining Authority. (i) Other terms and expressions in this subpart C not defined in this section are to be taken in the sense indicated in PCT Art. 2 and 35 U.S.C. 351. [43 FR 20466, May 11, 1978, as amended at 52 FR 20047, May 28, 1987] (a) The United States Patent and Trademark Office is a Receiving Office only for applicants who are residents or nationals of the United States of America. (b) The Patent and Trademark Office, when acting as a Receiving Office, will be identified by the full title “United States Receiving Office” or by the abbreviation “RO/US.” (c) The major functions of the Receiving Office include: (1) According of international filing dates to international applications meeting the requirements of PCT Art. 11(1), and PCT Rule 20; (2) Assuring that international applications meet the standards for format and content of PCT Art. 14(1), PCT Rule 9, 26, 29.1, 37, 38, 91, and portions of PCT Rules 3 through 11; (3) Collecting and, when required, transmitting fees due for processing international applications (PCT Rule 14, 15, 16); (4) Transmitting the record and search copies to the International Bureau and International Searching Authority, respectively (PCT Rules 22 and 23); and (5) Determining compliance with applicable requirements of part 5 of this chapter. (6) Reviewing and, unless prescriptions concerning national security prevent the application from being so transmitted (PCT Rule 19.4), transmitting the international application to the International Bureau for processing in its capacity as a Receiving Office: (i) Where the United States Receiving Office is not the competent Receiving Office under PCT Rule 19.1 or 19.2 and §1.421(a); or (ii) Where the international application is not in English but is in a language accepted under PCT Rule 12.1(a) by the International Bureau as a Receiving Office; or (iii) Where there is agreement and authorization in accordance with PCT Rule 19.4(a)(iii). [43 FR 20466, May 11, 1978, as amended at 60 FR 21439, May 2, 1995; 63 FR 29617, June 1, 1998] (a) Pursuant to appointment by the Assembly, the United States Patent and Trademark Office will act as an International Searching Authority for international applications filed in the United States Receiving Office and in other Receiving Offices as may be agreed upon by the Director, in accordance with the agreement between the Patent and Trademark Office and the International Bureau (PCT Art. 16(3)(b)). (b) The Patent and Trademark Office, when acting as an International Searching Authority, will be identified by the full title “United States International Searching Authority” or by the abbreviation “ISA/US.” (c) The major functions of the International Searching Authority include: (1) Approving or establishing the title and abstract; (2) Considering the matter of unity of invention; (3) Conducting international and international-type searches and preparing international and international-type search reports (PCT Art. 15, 17 and 18, and PCT Rules 25, 33 to 45 and 47), and issuing declarations that no international search report will be established (PCT Article 17(2)(a)); (4) Preparing written opinions of the International Searching Authority in accordance with PCT Rule 43bis (when necessary); and (5) Transmitting the international search report and the written opinion of the International Searching Authority to the applicant and the International Bureau. [43 FR 20466, May 11, 1978, as amended at 68 FR 59886, Oct. 20, 2003] (a) The United States Patent and Trademark Office will act as a Designated Office or Elected Office for international applications in which the United States of America has been designated or elected as a State in which patent protection is desired. (b) The United States Patent and Trademark Office, when acting as a Designated Office or Elected Office during international processing will be identified by the full title “United States Designated Office” or by the abbreviation “DO/US” or by the full title “United States Elected Office” or by the abbreviation “EO/US”. (c) The major functions of the United States Designated Office or Elected Office in respect to international applications in which the United States of America has been designated or elected, include: (1) Receiving various notifications throughout the international stage and (2) Accepting for national stage examination international applications which satisfy the requirements of 35 U.S.C. 371. [52 FR 20047, May 28, 1987] (a) The International Bureau is the World Intellectual Property Organization located at Geneva, Switzerland. It is the international intergovernmental organization which acts as the coordinating body under the Treaty and the Regulations (PCT Art. 2 (xix) and 35 U.S.C. 351 (h)). (b) The major functions of the International Bureau include: (1) Publishing of international applications and the International Gazette; (2) Transmitting copies of international applications to Designated Offices; (3) Storing and maintaining record copies; and (4) Transmitting information to authorities pertinent to the processing of specific international applications. (a) Pursuant to appointment by the Assembly, the United States Patent and Trademark Office will act as an International Preliminary Examining Authority for international applications filed in the United States Receiving Office and in other Receiving Offices as may be agreed upon by the Director, in accordance with agreement between the Patent and Trademark Office and the International Bureau. (b) The United States Patent and Trademark Office, when acting as an International Preliminary Examining Authority, will be identified by the full title “United States International Preliminary Examining Authority” or by the abbreviation “IPEA/US.” (c) The major functions of the International Preliminary Examining Authority include: (1) Receiving and checking for defects in the Demand; (2) Forwarding Demands in accordance with PCT Rule 59.3; (3) Collecting the handling fee for the International Bureau and the preliminary examination fee for the United States International Preliminary Examining Authority; (4) Informing applicant of receipt of the Demand; (5) Considering the matter of unity of invention; (6) Providing an international preliminary examination report which is a non-binding opinion on the questions of whether the claimed invention appears: to be novel, to involve an inventive step (to be nonobvious), and to be industrially applicable; and (7) Transmitting the international preliminary examination report to applicant and the International Bureau. [52 FR 20047, May 28, 1987, as amended at 63 FR 29617, June 1, 1998] The submission of an English language translation of the publication of an international application pursuant to 35 U.S.C. 154(d)(4) must clearly identify the international application to which it pertains (§1.5(a)) and be clearly identified as a submission pursuant to 35 U.S.C. 154(d)(4). Otherwise, the submission will be treated as a filing under 35 U.S.C. 111(a). Such submissions should be marked “Mail Stop PCT.” [68 FR 71007, Dec. 22, 2003] (a) Pursuant to the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.), the collection of information in this subpart has been reviewed and approved by the Office of Management and Budget under control number 0651–0021. (b) Notwithstanding any other provision of law, no person is required to respond to nor shall a person be subject to a penalty for failure to comply with a collection of information subject to the requirements of the Paperwork Reduction Act unless that collection of information displays a currently valid Office of Management and Budget control number. This section constitutes the display required by 44 U.S.C. 3512(a) and 5 CFR 1320.5(b)(2)(i) for the collection of information under Office of Management and Budget control number 0651–0021 (see 5 CFR 1320.5(b)(2)(ii)(D)). [63 FR 29617, June 1, 1998]
Title 37: Patents, Trademarks, and Copyrights
PART 1—RULES OF PRACTICE IN PATENT CASES
Subpart C—International Processing Provisions
General Information
§ 1.401 Definitions of terms under the Patent Cooperation Treaty.
§ 1.412 The United States Receiving Office.
§ 1.413 The United States International Searching Authority.
§ 1.414 The United States Patent and Trademark Office as a Designated Office or Elected Office.
§ 1.415 The International Bureau.
§ 1.416 The United States International Preliminary Examining Authority.
§ 1.417 Submission of translation of international publication.
§ 1.419 Display of currently valid control number under the Paperwork Reduction Act.
Who May File an International Application
§ 1.421 Applicant for international application.
(a) Only residents or nationals of the United States of America may file international applications in the United States Receiving Office. If an international application does not include an applicant who is indicated as being a resident or national of the United States of America, and at least one applicant:
(1) Has indicated a residence or nationality in a PCT Contracting State, or
(2) Has no residence or nationality indicated, applicant will be so notified and, if the international application includes a fee amount equivalent to that required by §1.445(a)(4), the international application will be forwarded for processing to the International Bureau acting as a Receiving Office (see also §1.412(c)(6)).
(b) Although the United States Receiving Office will accept international applications filed by any resident or national of the United States of America for international processing, for the purposes of the designation of the United States, an international application must be filed, and will be accepted by the Patent and Trademark Office for the national stage only if filed, by the inventor or as provided in §§1.422 or 1.423. Joint inventors must jointly apply for an international application.
(c) For the purposes of designations other than the United States, international applications may be filed by the assignee or owner.
(d) A registered attorney or agent of the applicant may sign the international application Request and file the international application for the applicant. A separate power of attorney from each applicant may be required.
(e) Any indication of different applicants for the purpose of different Designated Offices must be shown on the Request portion of the international application.
(f) Requests for changes in the indications concerning the applicant, agent, or common representative of an international application shall be made in accordance with PCT Rule 92bis and may be required to be signed by all applicants.
(g) Requests for withdrawals of the international application, designations, priority claims, the Demand, or elections shall be made in accordance with PCT Rule 90bis and must be signed by all applicants. A separate power of attorney from the applicants will be required for the purposes of any request for a withdrawal in accordance with PCT Rule 90bis which is not signed by all applicants. The submission of a separate power of attorney may be excused upon the request of another applicant where one or more inventors cannot be found or reached after diligent effort. Such a request must be accompanied by a statement explaining to the satisfaction of the Director the lack of the signature concerned.
[43 FR 20466, May 11, 1978, as amended at 53 FR 47810, Nov. 28, 1988; 60 FR 21440, May 2, 1995; 68 FR 59887, Oct. 20, 2003; 68 FR 67805, Dec. 4, 2003]
§ 1.422 When the inventor is dead.
In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may file an international application which designates the United States of America.
§ 1.423 When the inventor is insane or legally incapacitated.
In case an inventor is insane or otherwise legally incapacitated, the legal representative (guardian, conservator, etc.) of such inventor may file an international application which designates the United States of America.
The International Application
§ 1.431 International application requirements.
(a) An international application shall contain, as specified in the Treaty and the Regulations, a Request, a description, one or more claims, an abstract, and one or more drawings (where required). (PCT Art. 3(2) and section 207 of the Administrative Instructions.)
(b) An international filing date will be accorded by the United States Receiving Office, at the time to receipt of the international application, provided that:
(1) At least one applicant (§1.421) is a United States resident or national and the papers filed at the time of receipt of the international application so indicate (35 U.S.C. 361(a), PCT Art. 11(1)(i)).
(2) The international application is in the English language (35 U.S.C. 361(c), PCT Art. 11(1)(ii)).
(3) The international application contains at least the following elements (PCT Art. 11(1)(iii)):
(i) An indication that it is intended as an international application (PCT Rule 4.2);
(ii) The designation of at least one Contracting State of the International Patent Cooperation Union (§1.432);
(iii) The name of the applicant, as prescribed (note §§1.421–1.423);
(iv) A part which on the face of it appears to be a description; and
(v) A part which on the face of it appears to be a claim.
(c) Payment of the international filing fee (PCT Rule 15.2) and the transmittal and search fees (§1.445) may be made in full at the time the international application papers required by paragraph (b) of this section are deposited or within one month thereafter. The international filing, transmittal, and search fee payable is the international filing, transmittal, and search fee in effect on the receipt date of the international application.
(1) If the international filing, transmittal and search fees are not paid within one month from the date of receipt of the international application and prior to the sending of a notice of deficiency which imposes a late payment fee, applicant will be notified and given one month within which to pay the deficient fees plus the late payment fee. Subject to paragraph (c)(2) of this section, the late payment fee will be equal to the greater of:
(i) Fifty percent of the amount of the deficient fees; or
(ii) An amount equal to the transmittal fee;
(2) The late payment fee shall not exceed an amount equal to fifty percent of the international filing fee not taking into account any fee for each sheet of the international application in excess of thirty sheets (PCT Rule 16bis).
(3) The one-month time limit set pursuant to paragraph (c) of this section to pay deficient fees may not be extended.
(d) If the payment needed to cover the transmittal fee, the international filing fee, the search fee, and the late payment fee pursuant to paragraph (c) of this section is not timely made in accordance with PCT Rule 16bis.1(e), the Receiving Office will declare the international application withdrawn under PCT Article 14(3)(a).
[43 FR 20466, May 11, 1978, as amended at 50 FR 9383, Mar. 7, 1985; 52 FR 20047, May 28, 1987; 58 FR 4344, Jan. 14, 1993; 63 FR 29618, June 1, 1998; 68 FR 59887, Oct. 20, 2003; 68 FR 67805, Dec. 4, 2003]
§ 1.432 Designation of States by filing an international application.
The filing of an international application request shall constitute:
(a) The designation of all Contracting States that are bound by the Treaty on the international filing date;
(b) An indication that the international application is, in respect of each designated State to which PCT Article 43 or 44 applies, for the grant of every kind of protection which is available by way of the designation of that State; and
(c) An indication that the international application is, in respect of each designated State to which PCT Article 45(1) applies, for the grant of a regional patent and also, unless PCT Article 45(2) applies, a national patent.
[68 FR 59887, Oct. 20, 2003]
§ 1.433 Physical requirements of international application.
(a) The international application and each of the documents that may be referred to in the check list of the Request (PCT Rule 3.3(a)(ii)) shall be filed in one copy only.
(b) All sheets of the international application must be on A4 size paper (21.0×29.7 cm.).
(c) Other physical requirements for international applications are set forth in PCT Rule 11 and sections 201–207 of the Administrative Instructions.
§ 1.434 The request.
(a) The request shall be made on a standardized form (PCT Rules 3 and 4). Copies of printed Request forms are available from the United States Patent and Trademark Office. Letters requesting printed forms should be marked “Mail Stop PCT.”
(b) The Check List portion of the Request form should indicate each document accompanying the international application on filing.
(c) All information, for example, addresses, names of States and dates, shall be indicated in the Request as required by PCT Rule 4 and Administrative Instructions 110 and 201.
(d) For the purposes of the designation of the United States of America, an international application shall include:
(1) The name of the inventor; and
(2) A reference to any prior-filed national application or international application designating the United States of America, if the benefit of the filing date for the prior-filed application is to be claimed.
(e) An international application may also include in the Request a declaration of the inventors as provided for in PCT Rule 4.17(iv).
[43 FR 20466, May 11, 1978, as amended at 58 FR 4345, Jan. 14, 1993; 66 FR 16006, Mar. 22, 2001; 66 FR 67096, Dec. 28, 2001; 68 FR 14337, Mar. 25, 2003; 68 FR 59887, Oct. 20, 2003]
§ 1.435 The description.
(a) The application must meet the requirements as to the content and form of the description set forth in PCT Rules 5, 9, 10, and 11 and sections 204 and 208 of the Administrative Instructions.
(b) In international applications designating the United States the description must contain upon filing an indication of the best mode contemplated by the inventor for carrying out the claimed invention.
[43 FR 20466, May 11, 1978, as amended at 63 FR 29618, June 1, 1998]
§ 1.436 The claims.
The requirements as to the content and format of claims are set forth in PCT Art. 6 and PCT Rules 6, 9, 10 and 11 and shall be adhered to. The number of the claims shall be reasonable, considering the nature of the invention claimed.
§ 1.437 The drawings.
(a) Subject to paragraph (b) of this section, when drawings are necessary for the understanding of the invention, or are mentioned in the description, they must be part of an international application as originally filed in the United States Receiving Office in order to maintain the international filing date during the national stage (PCT Art. 7).
(b) Drawings missing from the application upon filing will be accepted if such drawings are received within 30 days of the date of first receipt of the incomplete papers. If the missing drawings are received within the 30-day period, the international filing date shall be the date on which such drawings are received. If such drawings are not timely received, all references to drawings in the international application shall be considered non-existent (PCT Art. 14(2), Administrative Instruction 310).
(c) The physical requirements for drawings are set forth in PCT Rule 11 and shall be adhered to.
§ 1.438 The abstract.
(a) Requirements as to the content and form of the abstract are set forth in PCT Rule 8, and shall be adhered to.
(b) Lack of an abstract upon filing of an international application will not affect the granting of a filing date. However, failure to furnish an abstract within one month from the date of the notification by the Receiving Office will result in the international appplication being declared withdrawn.
Fees
§ 1.445 International application filing, processing and search fees.
(a) The following fees and charges for international applications are established by the Director under the authority of 35 U.S.C. 376:
(1) A transmittal fee (see 35 U.S.C. 361(d) and PCT Rule 14)—$300.00
(2) A search fee (see 35 U.S.C. 361(d) and PCT Rule 16):
(i) If a corresponding prior United States national application under 35 U.S.C. 111(a) has been filed on or after December 8, 2004, the basic filing fee under §1.16(a), search fee under §1.16(k), and examination fee under §1.16(o) have been paid therein, and the corresponding prior United States national application is identified by application number, if known, or if the application number is not known by the filing date, title, and name of applicant (and preferably the application docket number), in the international application or accompanying papers at the time of filing the international application—$300.00.
(ii) If a corresponding prior United States national application under 35 U.S.C. 111(a) has been filed before December 8, 2004, the basic filing fee under §1.16 has been paid therein, and the corresponding prior United States national application is identified by application number, if known, or if the application number is not known by the filing date, title, and name of applicant (and preferably the application docket number), in the international application or accompanying papers at the time of filing the international application—$300.00.
(iii) For all situations not provided for in paragraphs (a)(2)(i) or (a)(2)(ii) of this section—$1000.00.
(3) A supplemental search fee when required, per additional invention—$1,000.00
(4) A fee equivalent to the transmittal fee in paragraph (a)(1) of this section for transmittal of an international application to the International Bureau for processing in its capacity as a Receiving Office (PCT Rule 19.4).
(b) The international filing fee shall be as prescribed in PCT Rule 15.
[68 FR 59888, Oct. 20, 2003, as amended at 70 FR 3891, Jan. 27, 2005]
§ 1.446 Refund of international application filing and processing fees.
(a) Money paid for international application fees, where paid by actual mistake or in excess, such as a payment not required by law or treaty and its regulations, may be refunded. A mere change of purpose after the payment of a fee will not entitle a party to a refund of such fee. The Office will not refund amounts of twenty-five dollars or less unless a refund is specifically requested and will not notify the payor of such amounts. If the payor or party requesting a refund does not provide the banking information necessary for making refunds by electronic funds transfer, the Office may use the banking information provided on the payment instrument to make any refund by electronic funds transfer.
(b) Any request for refund under paragraph (a) of this section must be filed within two years from the date the fee was paid. If the Office charges a deposit account by an amount other than an amount specifically indicated in an authorization under §1.25(b), any request for refund based upon such charge must be filed within two years from the date of the deposit account statement indicating such charge and include a copy of that deposit account statement. The time periods set forth in this paragraph are not extendable.
(c) Refund of the supplemental search fees will be made if such refund is determined to be warranted by the Director or the Director's designee acting under PCT Rule 40.2(c).
(d) The international and search fees will be refunded if no international filing date is accorded or if the application is withdrawn before transmittal of the record copy to the International Bureau (PCT Rules 15.6 and 16.2). The search fee will be refunded if the application is withdrawn before transmittal of the search copy to the International Searching Authority. The transmittal fee will not be refunded.
(e) The handling fee (§1.482(b)) will be refunded (PCT Rule 57.6) only if:
(1) The Demand is withdrawn before the Demand has been sent by the International Preliminary Examining Authority to the International Bureau, or
(2) The Demand is considered not to have been submitted (PCT Rule 54.4(a)).
(35 U.S.C. 6; 15 U.S.C. 1113, 1123)
[43 FR 20466, May 11, 1978, as amended at 50 FR 9384, Mar. 7, 1985; 50 FR 31826, Aug. 6, 1985; 58 FR 4345, Jan. 14, 1993; 65 FR 54677, Sept. 8, 2000]
Priority
§ 1.451 The priority claim and priority document in an international application.
(a) The claim for priority must, subject to paragraph (d) of this section, be made on the Request (PCT Rule 4.10) in a manner complying with sections 110 and 115 of the Administrative Instructions.
(b) Whenever the priority of an earlier United States national application or international application filed with the United States Receiving Office is claimed in an international application, the applicant may request in the Request or in a letter of transmittal accompanying the international application upon filing with the United States Receiving Office or in a separate letter filed in the United States Receiving Office not later than 16 months after the priority date, that the United States Patent and Trademark Office prepare a certified copy of the prior application for transmittal to the International Bureau (PCT Article 8 and PCT Rule 17). The fee for preparing a certified copy is set forth in §1.19(b)(1).
(c) If a certified copy of the priority document is not submitted together with the international application on filing, or, if the priority application was filed in the United States and a request and appropriate payment for preparation of such a certified copy do not accompany the international application on filing or are not filed within 16 months of the priority date, the certified copy of the priority document must be furnished by the applicant to the International Bureau or to the United States Receiving Office within the time limit specified in PCT Rule 17.1(a).
(d) The applicant may correct or add a priority claim in accordance with PCT Rule 26bis.1.
(35 U.S.C. 6; 15 U.S.C. 1113, 1123)
[43 FR 20466, May 11, 1978, as amended at 50 FR 9384, Mar. 7, 1985; 50 FR 11366, Mar. 21, 1985; 54 FR 6903, Feb. 15, 1989; 58 FR 4345, Jan. 14, 1993; 63 FR 29619, June 1, 1998; 66 FR 16006, Mar. 22, 2001]
Representation
§ 1.455 Representation in international applications.
(a) Applicants of international applications may be represented by attorneys or agents registered to practice before the United States Patent and Trademark Office or by an applicant appointed as a common representative (PCT Art. 49, Rules 4.8 and 90 and §11.9). If applicants have not appointed an attorney or agent or one of the applicants to represent them, and there is more than one applicant, the applicant first named in the request and who is entitled to file in the U.S. Receiving Office shall be considered to be the common representative of all the applicants. An attorney or agent having the right to practice before a national office with which an international application is filed and for which the United States is an International Searching Authority or International Preliminary Examining Authority may be appointed to represent the applicants in the international application before that authority. An attorney or agent may appoint an associate attorney or agent who shall also then be of record (PCT Rule 90.1(d)). The appointment of an attorney or agent, or of a common representative, revokes any earlier appointment unless otherwise indicated (PCT Rule 90.6 (b) and (c)).
(b) Appointment of an agent, attorney or common representative (PCT Rule 4.8) must be effected either in the Request form, signed by applicant, in the Demand form, signed by applicant, or in a separate power of attorney submitted either to the United States Receiving Office or to the International Bureau.
(c) Powers of attorney and revocations thereof should be submitted to the United States Receiving Office until the issuance of the international search report.
(d) The addressee for correspondence will be as indicated in section 108 of the Administrative Instructions.
[43 FR 20466, May 11, 1978, as amended at 50 FR 5171, Feb. 6, 1985; 58 FR 4345, Jan. 14, 1993; 68 FR 59888, Oct. 20, 2003; 69 FR 35452, June 24, 2004]
Transmittal of Record Copy
§ 1.461 Procedures for transmittal of record copy to the International Bureau.
(a) Transmittal of the record copy of the international application to the International Bureau shall be made by the United States Receiving Office or as provided by PCT Rule 19.4.
(b) [Reserved]
(c) No copy of an international application may be transmitted to the International Bureau, a foreign Designated Office, or other foreign authority by the United States Receiving Office or the applicant, unless the applicable requirements of part 5 of this chapter have been satisfied.
[43 FR 20466, May 11, 1978, as amended at 50 FR 9384, Mar. 7, 1985; 63 FR 29619, June 1, 1998]
Timing
§ 1.465 Timing of application processing based on the priority date.
(a) For the purpose of computing time limits under the Treaty, the priority date shall be defined as in PCT Art. 2(xi).
(b) When a claimed priority date is corrected or added under PCT Rule 26bis.1(a), or withdrawn under PCT Rule 90bis.3, or considered not to have been made under PCT Rule 26bis.2, the priority date for the purposes of computing any non-expired time limits will be the date of the earliest valid remaining priority claim of the international application, or if none, the international filing date.
(c) When corrections under PCT Art. 11(2), Art. 14(2) or PCT Rule 20.2(a) (i) or (iii) are timely submitted, and the date of receipt of such corrections falls later than one year from the claimed priority date or dates, the Receiving Office shall proceed under PCT Rule 26bis.2.
[43 FR 20466, May 11, 1978, as amended at 63 FR 29619, June 1, 1998]
§ 1.468 Delays in meeting time limits.
Delays in meeting time limits during international processing of international applications may only be excused as provided in PCT Rule 82. For delays in meeting time limits in a national application, see §1.137.
Amendments
§ 1.471 Corrections and amendments during international processing.
(a) Except as otherwise provided in this paragraph, all corrections submitted to the United States Receiving Office or United States International Searching Authority must be in English, in the form of replacement sheets in compliance with PCT Rules 10 and 11, and accompanied by a letter that draws attention to the differences between the replaced sheets and the replacement sheets. Replacement sheets are not required for the deletion of lines of text, the correction of simple typographical errors, and one addition or change of not more than five words per sheet. These changes may be stated in a letter and, if appropriate, the United States Receiving Office will make the deletion or transfer the correction to the international application, provided that such corrections do not adversely affect the clarity and direct reproducibility of the application (PCT Rule 26.4). Amendments that do not comply with PCT Rules 10 and 11.1 to 11.13 may not be entered.
(b) Amendments of claims submitted to the International Bureau shall be as prescribed by PCT Rule 46.
(c) Corrections or additions to the Request of any declarations under PCT Rule 4.17 should be submitted to the International Bureau as prescribed by PCT Rule 26ter.
[43 FR 20466, May 11, 1978, as amended at 63 FR 29619, June 1, 1998; 66 FR 16006, Mar. 22, 2001]
§ 1.472 Changes in person, name, or address of applicants and inventors.
All requests for a change in person, name or address of applicants and inventor be sent to the United States Receiving Office until the time of issuance of the international search report. Thereafter requests for such changes should be submitted to the International Bureau.
[43 FR 20466, May 11, 1978. Redesignated at 52 FR 20047, May 28, 1987]
Unity of Invention
§ 1.475 Unity of invention before the International Searching Authority, the International Preliminary Examining Authority and during the national stage.
(a) An international and a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in an application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
(b) An international or a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
(c) If an application contains claims to more or less than one of the combinations of categories of invention set forth in paragraph (b) of this section, unity of invention might not be present.
(d) If multiple products, processes of manufacture or uses are claimed, the first invention of the category first mentioned in the claims of the application and the first recited invention of each of the other categories related thereto will be considered as the main invention in the claims, see PCT Article 17(3)(a) and §1.476(c).
(e) The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim.
[58 FR 4345, Jan. 14, 1993]
§ 1.476 Determination of unity of invention before the International Searching Authority.
(a) Before establishing the international search report, the International Searching Authority will determine whether the international application complies with the requirement of unity of invention as set forth in §1.475.
(b) If the International Searching Authority considers that the international application does not comply with the requirement of unity of invention, it shall inform the applicant accordingly and invite the payment of additional fees (note §1.445 and PCT Art. 17(3)(a) and PCT Rule 40). The applicant will be given a time period in accordance with PCT Rule 40.3 to pay the additional fees due.
(c) In the case of non-compliance with unity of invention and where no additional fees are paid, the international search will be performed on the invention first mentioned (“main invention”) in the claims.
(d) Lack of unity of invention may be directly evident before considering the claims in relation to any prior art, or after taking the prior art into consideration, as where a document discovered during the search shows the invention claimed in a generic or linking claim lacks novelty or is clearly obvious, leaving two or more claims joined thereby without a common inventive concept. In such a case the International Searching Authority may raise the objection of lack of unity of invention.
[43 FR 20466, May 11, 1978. Redesignated and amended at 52 FR 20048, May 28, 1987; 58 FR 4346, Jan. 14, 1993]
§ 1.477 Protest to lack of unity of invention before the International Searching Authority.
(a) If the applicant disagrees with the holding of lack of unity of invention by the International Searching Authority, additional fees may be paid under protest, accompanied by a request for refund and a statement setting forth reasons for disagreement or why the required additional fees are considered excessive, or both (PCT Rule 40.2(c)).
(b) Protest under paragraph (a) of this section will be examined by the Director or the Director's designee. In the event that the applicant's protest is determined to be justified, the additional fees or a portion thereof will be refunded.
(c) An applicant who desires that a copy of the protest and the decision thereon accompany the international search report when forwarded to the Designated Offices, may notify the International Searching Authority to that effect any time prior to the issuance of the international search report. Thereafter, such notification should be directed to the International Bureau (PCT Rule 40.2(c)).
[43 FR 20466, May 11, 1978. Redesignated and amended at 52 FR 20048, May 28, 1987]
International Preliminary Examination
§ 1.480 Demand for international preliminary examination.
(a) On the filing of a proper Demand in an application for which the United States International Preliminary Examining Authority is competent and for which the fees have been paid, the international application shall be the subject of an international preliminary examination. The preliminary examination fee (§1.482(a)(1)) and the handling fee (§1.482(b)) shall be due within the applicable time limit set forth in PCT Rule 57.3.
(b) The Demand shall be made on a standardized form (PCT Rule 53). Copies of the printed Demand forms are available from the United States Patent and Trademark Office. Letters requesting printed Demand forms should be marked “Mail Stop PCT.”
(c) Withdrawal of a proper Demand prior to the start of the international preliminary examination will entitle applicant to a refund of the preliminary examination fee minus the amount of the transmittal fee set forth in §1.445(a)(1).
(d) 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).
(e) Any Demand filed after the expiration of the applicable time limit set forth in PCT Rule 54bis.1(a) shall be considered as if it had not been submitted (PCT Rule 54bis.1(b)).
[52 FR 20048, May 28, 1987, as amended at 53 FR 47810, Nov. 28, 1988; 58 FR 4346, Jan. 14, 1993; 63 FR 29619, June 1, 1998; 67 FR 523, Jan. 4, 2002; 68 FR 14337, Mar. 25, 2003; 68 FR 59888, Oct. 20, 2003]
§ 1.481 Payment of international preliminary examination fees.
(a) The handling and preliminary examination fees shall be paid within the time period set in PCT Rule 57.3. The handling fee or preliminary examination fee payable is the handling fee or preliminary examination fee in effect on the date of payment.
(1) If the handling and preliminary examination fees are not paid within the time period set in PCT Rule 57.3, applicant will be notified and given one month within which to pay the deficient fees plus a late payment fee equal to the greater of:
(i) Fifty percent of the amount of the deficient fees, but not exceeding an amount equal to double the handling fee; or
(ii) An amount equal to the handling fee (PCT Rule 58bis.2).
(2) The one-month time limit set in this paragraph to pay deficient fees may not be extended.
(b) If the payment needed to cover the handling and preliminary examination fees, pursuant to paragraph (a) of this section, is not timely made in accordance with PCT Rule 58bis.1(d), the United States International Preliminary Examination Authority will declare the Demand to be considered as if it had not been submitted.
[63 FR 29619, June 1, 1998, as amended at 68 FR 59888, Oct. 20, 2003]
§ 1.482 International preliminary examination fees.
(a) The following fees and charges for international preliminary examination are established by the Director under the authority of 35 U.S.C. 376:
(1) The following preliminary examination fee is due on filing the Demand:
(i) If an international search fee as set forth in §1.445(a)(2) has been paid on the international application to the United States Patent and Trademark Office as an International Searching Authority—$600.00
(ii) If the International Searching Authority for the international application was an authority other than the United States Patent and Trademark Office—$750.00
(2) An additional preliminary examination fee when required, per additional invention—$600.00
(b) The handling fee is due on filing the Demand and shall be as prescribed in PCT Rule 57.
[68 FR 59888, Oct. 20, 2003]
§ 1.484 Conduct of international preliminary examination.
(a) An international preliminary examination will be conducted to formulate a non-binding opinion as to whether the claimed invention has novelty, involves an inventive step (is non-obvious) and is industrially applicable.
(b) International preliminary examination will begin in accordance with PCT Rule 69.1.
(c) No international preliminary examination will be conducted on inventions not previously searched by an International Searching Authority.
(d) The International Preliminary Examining Authority will establish a written opinion if any defect exists or if the claimed invention lacks novelty, inventive step or industrial applicability and will set a non-extendable time limit in the written opinion for the applicant to reply.
(e) The written opinion established by the International Searching Authority under PCT Rule 43bis.1 shall be considered to be a written opinion of the United States International Preliminary Examining Authority for the purposes of paragraph (d) of this section.
(f) The International Preliminary Examining Authority may establish further written opinions under paragraph (d) of this section.
(g) If no written opinion under paragraph (d) of this section is necessary, or if no further written opinion under paragraph (f) of this section is to be established, or after any written opinion and the reply thereto or the expiration of the time limit for reply to such written opinion, an international preliminary examination report will be established by the International Preliminary Examining Authority. One copy will be submitted to the International Bureau and one copy will be submitted to the applicant.
(h) An applicant will be permitted a personal or telephone interview with the examiner, which may be requested after the filing of a Demand, and must be conducted during the period between the establishment of the written opinion and the establishment of the international preliminary examination report. Additional interviews may be conducted where the examiner determines that such additional interviews may be helpful to advancing the international preliminary examination procedure. A summary of any such personal or telephone interview must be filed by the applicant or, if not filed by applicant be made of record in the file by the examiner.
(i) If the application whose priority is claimed in the international application is in a language other than English, the United States International Preliminary Examining Authority may, where the validity of the priority claim is relevant for the formulation of the opinion referred to in Article 33(1), invite the applicant to furnish an English translation of the priority document within two months from the date of the invitation. If the translation is not furnished within that time limit, the international preliminary report may be established as if the priority had not been claimed.
[52 FR 20049, May 28, 1987, as amended at 58 FR 4346, Jan. 14, 1993; 62 FR 53199, Oct. 10, 1997; 63 FR 29619, June 1, 1998; 66 FR 16006, Mar. 22, 2001; 68 FR 59888, Oct. 20, 2003]
§ 1.485 Amendments by applicant during international preliminary examination.
(a) 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:
(1) Be made by submitting a replacement sheet in compliance with PCT Rules 10 and 11.1 to 11.13 for every sheet of the application which differs from the sheet it replaces unless an entire sheet is cancelled; and
(2) Include a description of how the replacement sheet differs from the replaced sheet. Amendments that do not comply with PCT Rules 10 and 11.1 to 11.13 may not be entered.
(b) If an amendment cancels an entire sheet of the international application, that amendment shall be communicated in a letter.
[58 FR 4346, Jan. 14, 1993, as amended at 63 FR 29620, June 1, 1998]
§ 1.488 Determination of unity of invention before the International Preliminary Examining Authority.
(a) Before establishing any written opinion or the international preliminary examination report, the International Preliminary Examining Authority will determine whether the international application complies with the requirement of unity of invention as set forth in §1.475.
(b) If the International Preliminary Examining Authority considers that the international application does not comply with the requirement of unity of invention, it may:
(1) Issue a written opinion and/or an international preliminary examination report, in respect of the entire international application and indicate that unity of invention is lacking and specify the reasons therefor without extending an invitation to restrict or pay additional fees. No international preliminary examination will be conducted on inventions not previously searched by an International Searching Authority.
(2) Invite the applicant to restrict the claims or pay additional fees, pointing out the categories of invention found, within a set time limit which will not be extended. No international preliminary examination will be conducted on inventions not previously searched by an International Searching Authority, or
(3) If applicant fails to restrict the claims or pay additional fees within the time limit set for reply, the International Preliminary Examining Authority will issue a written opinion and/or establish an international preliminary examination report on the main invention and shall indicate the relevant facts in the said report. In case of any doubt as to which invention is the main invention, the invention first mentioned in the claims and previously searched by an International Searching Authority shall be considered the main invention.
(c) Lack of unity of invention may be directly evident before considering the claims in relation to any prior art, or after taking the prior art into consideration, as where a document discovered during the search shows the invention claimed in a generic or linking claim lacks novelty or is clearly obvious, leaving two or more claims joined thereby without a common inventive concept. In such a case the International Preliminary Examining Authority may raise the objection of lack of unity of invention.
[52 FR 20049, May 28, 1987, as amended at 58 FR 4346, Jan. 14, 1993; 62 FR 53200, Oct. 10, 1997]
§ 1.489 Protest to lack of unity of invention before the International Preliminary Examining Authority.
(a) If the applicant disagrees with the holding of lack of unity of invention by the International Preliminary Examining Authority, additional fees may be paid under protest, accompanied by a request for refund and a statement setting forth reasons for disagreement or why the required additional fees are considered excessive, or both.
(b) Protest under paragraph (a) of this section will be examined by the Director or the Director's designee. In the event that the applicant's protest is determined to be justified, the additional fees or a portion thereof will be refunded.
(c) An applicant who desires that a copy of the protest and the decision thereon accompany the international preliminary examination report when forwarded to the Elected Offices, may notify the International Preliminary Examining Authority to that effect any time prior to the issuance of the international preliminary examination report. Thereafter, such notification should be directed to the International Bureau.
[52 FR 20050, May 28, 1987]
National Stage
§ 1.491 National stage commencement and entry.
(a) Subject to 35 U.S.C. 371(f), the national stage shall commence with the expiration of the applicable time limit under PCT Article 22 (1) or (2), or under PCT Article 39(1)(a).
(b) An international application enters the national stage when the applicant has filed the documents and fees required by 35 U.S.C. 371(c) within the period set in §1.495.
[67 FR 523, Jan. 4, 2002]
§ 1.492 National stage fees.
The following fees and charges are established for international applications entering the national stage under 35 U.S.C. 371:
(a) The basic national fee for an international application entering the national stage under 35 U.S.C. 371 if the basic national fee was not paid before December 8, 2004:
By a small entity (§1.27(a))—$150.00.
By other than a small entity—$300.00.
(b) Search fee for an international application entering the national stage under 35 U.S.C. 371 if the basic national fee was not paid before December 8, 2004:
(1) If an international preliminary examination report on the international application prepared by the United States International Preliminary Examining Authority or a written opinion on the international application prepared by the United States International Searching Authority states that the criteria of novelty, inventive step (non-obviousness), and industrial applicability, as defined in PCT Article 33(1) to (4) have been satisfied for all of the claims presented in the application entering the national stage:
By a small entity (§ 1.27(a))........................... $0.00By other than a small entity................................. $0.00
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(2) If the search fee as set forth in §1.445(a)(2) has been paid on the international application to the United States Patent and Trademark Office as an International Searching Authority: |
By a small entity (§ 1.27(a))........................... $50.00By other than a small entity................................. $100.00
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(3) If an international search report on the international application has been prepared by an International Searching Authority other than the United States International Searching Authority and is provided, or has been previously communicated by the International Bureau, to the Office: |
By a small entity (§ 1.27(a))........................... $200.00By other than a small entity................................. $400.00
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(4) In all situations not provided for in paragraphs (b)(1), (b)(2), or (b)(3) of this section: |
By a small entity (§ 1.27(a))........................... $250.00By other than a small entity................................. $500.00
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(c) The examination fee for an international application entering the national stage under 35 U.S.C. 371 if the basic national fee was not paid before December 8, 2004: (1) If an international preliminary examination report on the international application prepared by the United States International Preliminary Examining Authority or a written opinion on the international application prepared by the United States International Searching Authority states that the criteria of novelty, inventive step (non-obviousness), and industrial applicability, as defined in PCT Article 33(1) to (4) have been satisfied for all of the claims presented in the application entering the national stage: |
By a small entity (§ 1.27(a))........................... $0.00By other than a small entity................................. $0.00
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(2) In all situations not provided for in paragraph (c)(1) of this section: |
By a small entity (§ 1.27(a))........................... $100.00By other than a small entity................................. $200.00
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(d) In addition to the basic national fee, for filing or on later presentation at any other time of each claim in independent form in excess of 3: By a small entity (§1.27(a))—$100.00. By other than a small entity—$200.00. (e) In addition to the basic national fee, for filing or on later presentation at any other time of each claim (whether dependent or independent) in excess of 20 (note that §1.75(c) indicates how multiple dependent claims are considered for fee calculation purposes): By a small entity (§1.27(a))—$25.00. By other than a small entity—$50.00. (f) In addition to the basic national fee, if the application contains, or is amended to contain, a multiple dependent claim, per application: By a small entity (§1.27(a))—$180.00. By other than a small entity—$360.00. (g) If the excess claims fees required by paragraphs (d) and (e) of this section and multiple dependent claim fee required by paragraph (f) of this section are not paid with the basic national fee or on later presentation of the claims for which the excess claims or multiple dependent claim fees are due, the fees required by paragraphs (d), (e), and (f) of this section must be paid or the claims canceled by amendment prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment. (h) Surcharge for filing any of the search fee, the examination fee, or the oath or declaration after the date of the commencement of the national stage (§1.491(a)) pursuant to §1.495(c): By a small entity (§1.27(a))—$65.00 By other than a small entity—$130.00 (i) For filing an English translation of an international application or of any annexes to an international preliminary examination report later than thirty months after the priority date (§§1.495(c) and (e))—$130.00. (j) Application size fee for any international application for which the basic national fee was not paid before December 8, 2004, the specification and drawings of which exceed 100 sheets of paper, for each additional 50 sheets or fraction thereof (see §1.52(f) for applications submitted in whole or in part on an electronic medium): By a small entity (§1.27(a))—$125.00 By other than a small entity—$250.00 [70 FR 3892, Jan. 27, 2005, as amended at 70 FR 5054, Feb. 1, 2005; 70 FR 30365, May 26, 2005; 70 FR 35378, June 20, 2005] § 1.495 Entering the national stage in the United States of America.(a) The applicant in an international application must fulfill the requirements of 35 U.S.C. 371 within the time periods set forth in paragraphs (b) and (c) of this section in order to prevent the abandonment of the international application as to the United States of America. The thirty-month time period set forth in paragraphs (b), (c), (d), (e) and (h) of this section may not be extended. International applications for which those requirements are timely fulfilled will enter the national stage and obtain an examination as to the patentability of the invention in the United States of America. (b) To avoid abandonment of the application, the applicant shall furnish to the United States Patent and Trademark Office not later than the expiration of thirty months from the priority date: (1) A copy of the international application, unless it has been previously communicated by the International Bureau or unless it was originally filed in the United States Patent and Trademark Office; and (2) The basic national fee (see §1.492(a)). (c)(1) If applicant complies with paragraph (b) of this section before expiration of thirty months from the priority date, the Office will notify the applicant if he or she has omitted any of: (i) A translation of the international application, as filed, into the English language, if it was originally filed in another language and if any English language translation of the publication of the international application previously submitted under 35 U.S.C. 154(d) (§1.417) is not also a translation of the international application as filed (35 U.S.C. 371(c)(2)); (ii) The oath or declaration of the inventor (35 U.S.C. 371(c)(4) and §1.497), if a declaration of inventorship in compliance with §1.497 has not been previously submitted in the international application under PCT Rule 4.17(iv) within the time limits provided for in PCT Rule 26ter.1; (iii) The search fee set forth in §1.492(b); (iv) The examination fee set forth in §1.492(c); and (v) Any application size fee required by §1.492(j). (2) A notice under paragraph (c)(1) of this section will set a period of time within which applicant must provide any omitted translation, oath or declaration of the inventor, search fee set forth in §1.492(b), examination fee set forth in §1.492(c), and any application size fee required by §1.492(j) in order to avoid abandonment of the application. (3) The payment of the processing fee set forth in §1.492(i) is required for acceptance of an English translation later than the expiration of thirty months after the priority date. The payment of the surcharge set forth in §1.492(h) is required for acceptance of any of the search fee, the examination fee, or the oath or declaration of the inventor after the date of the commencement of the national stage (§1.491(a)). (4) A “Sequence Listing” need not be translated if the “Sequence Listing” complies with PCT Rule 12.1(d) and the description complies with PCT Rule 5.2(b). (d) A copy of any amendments to the claims made under PCT Article 19, and a translation of those amendments into English, if they were made in another language, must be furnished not later than the expiration of thirty months from the priority date. Amendments under PCT Article 19 which are not received by the expiration of thirty months from the priority date will be considered to be canceled. (e) A translation into English of any annexes to an international preliminary examination report (if applicable), if the annexes were made in another language, must be furnished not later than the expiration of thirty months from the priority date. Translations of the annexes which are not received by the expiration of thirty months from the priority date may be submitted within any period set pursuant to paragraph (c) of this section accompanied by the processing fee set forth in §1.492(f). Annexes for which translations are not timely received will be considered canceled. (f) Verification of the translation of the international application or any other document pertaining to an international application may be required where it is considered necessary, if the international application or other document was filed in a language other than English. (g) The documents and fees submitted under paragraphs (b) and (c) of this section must be clearly identified as a submission to enter the national stage under 35 U.S.C. 371. Otherwise, the submission will be considered as being made under 35 U.S.C. 111(a). (h) An international application becomes abandoned as to the United States thirty months from the priority date if the requirements of paragraph (b) of this section have not been complied with within thirty months from the priority date. If the requirements of paragraph (b) of this section are complied with within thirty months from the priority date but either of any required translation of the international application as filed or the oath or declaration are not timely filed, an international application will become abandoned as to the United States upon expiration of the time period set pursuant to paragraph (c) of this section. [52 FR 20051, May 28, 1987, as amended at 58 FR 4347, Jan. 14, 1993; 63 FR 29620, June 1, 1998; 65 FR 57060, Sept. 20, 2000; 67 FR 523, Jan. 4, 2002; 68 FR 71007, Dec. 22, 2003; 70 FR 3892, Jan. 27, 2005; 70 FR 30365, May 26, 2005] § 1.496 Examination of international applications in the national stage.(a) International applications which have complied with the requirements of 35 U.S.C. 371(c) will be taken up for action based on the date on which such requirements were met. However, unless an express request for early processing has been filed under 35 U.S.C. 371(f), no action may be taken prior to one month after entry into the national stage. (b) National stage applications having paid therein the search fee as set forth in §1.492(b)(1) and the examination fee as set forth in §1.492(c)(1) may be amended subsequent to the date of entry into the national stage only to the extent necessary to eliminate objections as to form or to cancel rejected claims. Such national stage applications will be advanced out of turn for examination. [52 FR 20051, May 28, 1987, as amended at 70 FR 5055, Feb. 1, 2005; 70 FR 35378, June 20, 2005] § 1.497 Oath or declaration under 35 U.S.C. 371(c)(4).(a) When an applicant of an international application desires to enter the national stage under 35 U.S.C. 371 pursuant to §1.495, and a declaration in compliance with this section has not been previously submitted in the international application under PCT Rule 4.17(iv) within the time limits provided for in PCT Rule 26ter.1, he or she must file an oath or declaration that: (1) Is executed in accordance with either §§1.66 or 1.68; (2) Identifies the application to which it is directed; (3) Identifies each inventor and the country of citizenship of each inventor; and (4) States that the person making the oath or declaration believes the named inventor or inventors to be the original and first inventor or inventors of the subject matter which is claimed and for which a patent is sought. (b)(1) The oath or declaration must be made by all of the actual inventors except as provided for in §§1.42, 1.43 or 1.47. (2) If the person making the oath or declaration or any supplemental oath or declaration is not the inventor (§§1.42, 1.43, or §1.47), the oath or declaration shall state the relationship of the person to the inventor, and, upon information and belief, the facts which the inventor would have been required to state. If the person signing the oath or declaration is the legal representative of a deceased inventor, the oath or declaration shall also state that the person is a legal representative and the citizenship, residence and mailing address of the legal representative. (c) Subject to paragraph (f) of this section, if the oath or declaration meets the requirements of paragraphs (a) and (b) of this section, the oath or declaration will be accepted as complying with 35 U.S.C. 371(c)(4) and §1.495(c). However, if the oath or declaration does not also meet the requirements of §1.63, a supplemental oath or declaration in compliance with §1.63 or an application data sheet will be required in accordance with §1.67. (d) If the oath or declaration filed pursuant to 35 U.S.C. 371(c)(4) and this section names an inventive entity different from the inventive entity set forth in the international application, or if a change to the inventive entity has been effected under PCT Rule 92bis subsequent to the execution of any oath or declaration which was filed in the application under PCT Rule 4.17(iv) or this section and the inventive entity thus changed is different from the inventive entity identified in any such oath or declaration, applicant must submit: (1) A statement from each person being added as an inventor and from each person being deleted as an inventor that any error in inventorship in the international application occurred without deceptive intention on his or her part; (2) The processing fee set forth in §1.17(i); (3) If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see §3.73(b) of this chapter); and (4) Any new oath or declaration required by paragraph (f) of this section. (e) The Office may require such other information as may be deemed appropriate under the particular circumstances surrounding the correction of inventorship. (f) A new oath or declaration in accordance with this section must be filed to satisfy 35 U.S.C. 371(c)(4) if the declaration was filed under PCT Rule 4.17(iv), and: (1) There was a change in the international filing date pursuant to PCT Rule 20.2 after the declaration was executed; or (2) A change in the inventive entity was effected under PCT Rule 92bis after the declaration was executed and no declaration which sets forth and is executed by the inventive entity as so changed has been filed in the application. (g) If a priority claim has been corrected or added pursuant to PCT Rule 26bis during the international stage after the declaration of inventorship was executed in the international application under PCT Rule 4.17(iv), applicant will be required to submit either a new oath or declaration or an application data sheet as set forth in §1.76 correctly identifying the application upon which priority is claimed. [61 FR 42807, Aug. 19, 1996, as amended at 65 FR 54677, Sept. 8, 2000; 66 FR 16006, Mar. 22, 2001; 66 FR 28054, May 22, 2001; 67 FR 524, Jan. 4, 2002; 67 FR 6075, Feb. 8, 2002] § 1.499 Unity of invention during the national stage.If the examiner finds that a national stage application lacks unity of invention under §1.475, the examiner may in an Office action require the applicant in the response to that action to elect the invention to which the claims shall be restricted. Such requirement may be made before any action on the merits but may be made at any time before the final action at the discretion of the examiner. Review of any such requirement is provided under §§1.143 and 1.144. [58 FR 4347, Jan. 14, 1993] Browse Previous | Browse Next
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