MPEP § 1893.01
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 on or after September 16, 2012]
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 prior to September 16, 2012]
Subject to 35 U.S.C. 371(f), commencement of the national stage occurs upon expiration of the applicable time limit under PCT Article 22(1) or (2), or under PCT Article 39(1)(a). See 35 U.S.C. 371(b) and 37 CFR 1.491(a). PCT Articles 22(1), 22(2), and 39(1)(a) provide for a time limit of not later than the expiration of 30 months from the priority date. Thus, in the absence of an express request for early processing of an international application under 35 U.S.C. 371(f) and compliance with the conditions provided therein, the U.S. national stage will commence upon expiration of 30 months from the priority date of the international application. Pursuant to 35 U.S.C. 371(f), the national stage may commence earlier than 30 months from the priority date, provided applicant makes an express request for early processing and has complied with the applicable requirements under 35 U.S.C. 371(c).
Entry into the national stage occurs upon completion of certain acts, as provided in 37 CFR 1.491(b). For international applications having an international filing date before September 16, 2012, the 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 37 CFR 1.495. For international applications having an international filing date on or after September 16, 2012, the international application enters the national stage when the applicant has filed the documents and fees required by 35 U.S.C. 371(c)(1) and (2) within the period set in 37 CFR 1.495. Thus, for international applications having an international filing date on or after September 16, 2012, submission of the oath or declaration of the inventor under 35 U.S.C. 371(c)(4) is not required to enter the U.S. national phase.
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An international application designating the U.S. will enter the national stage via the U.S. Designated Office unless a Demand electing the U.S. is filed under PCT Article 31 whereupon entry will be via the U.S. Elected Office.
When entering the U.S. national stage following either Chapter I or Chapter II, the applicant has the right to amend the application within the time limit of one month from commencement (PCT Article 28 and PCT Rule 52.1 or PCT Article 41 and PCT Rule 78.1, respectively).
[Editor Note: Paragraphs (a) and (h) below are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012]
[Editor Note: Paragraphs (a) and (h) below are not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.495 for more information and for the current rule, including the portions of the rule not reproduced below and applicable irrespective of application filing date and paras. (a) and (h) applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
To avoid abandonment of an international application as to the United States, applicant is required to comply with 37 CFR 1.495(b) within 30 months from the priority date. Thus, applicant must pay the basic national fee not later than the expiration of 30 months from the priority date and be sure that a copy of the international application has been received by the U.S. Designated or Elected Office not later than the expiration of 30 months from the priority date.
It is preferable to file the required national stage items online using the USPTO patent electronic filing system (further information regarding the USPTO patent electronic filing system is available at www.uspto.gov/patents-application-process/ file-online ). Applicants may also file these items using the Priority Mail Express® mailing procedure set forth in 37 CFR 1.10. Facsimile transmission is not acceptable for submission of the basic national fee and/or the copy of the international application. See 37 CFR 1.6(d). Likewise, the certificate of mailing procedures of 37 CFR 1.8 do not apply to the filing of the copy of the international application and payment of the basic national fee. See 37 CFR 1.8(a)(2)(i)(F).
Applicants cannot pay the basic national fee with a surcharge after the 30 month deadline. Failure to pay the basic national fee within 30 months from the priority date will result in abandonment of the application. The time for payment of the basic national fee is not extendable.
Where the international application was filed with the United States Receiving Office as the competent receiving Office, the copy of the international application referred to in 37 CFR 1.495(b) is not required. Otherwise, the copy of the international application required under 37 CFR 1.495(b) must be provided within 30 months from the priority date to avoid abandonment. A copy of the international application is published by the International Bureau at about 18 months from the priority date, at which time the published application becomes available to the U.S. Designated or Elected Office in electronic form in a digital library from which the U.S. Designated or Elected Office is entitled to retrieve the application. Pursuant to PCT Rule 93bis(b), the publication of the international application by the International Bureau (and the resulting availability of the published application in a digital library) is considered to effect the required communication of the copy of the international application to the U.S. Designated or Elected Office. Thus, publication of an international application by the International Bureau within 30 months from the priority date is considered to satisfy the requirement of 37 CFR 1.495(b).
Where the basic national fee has been paid and the copy of the international application (if required) has been received not later than the expiration of 30 months from the priority date, but applicant has omitted any required item set forth in 37 CFR 1.495(c)(1), the Office will process the national stage application in accordance with the provisions of 37 CFR 1.495 in effect for that application. As a consequence of the America Invents Act (AIA), 37 CFR 1.495 was amended to permit postponement of the submission of the inventor’s oath or declaration under certain conditions and is applicable to national stage applications having an international filing date on or after September 16, 2012. For national stage applications having an international filing date prior to September 16, 2012, the pre-AIA version of 37 CFR 1.45 remains in effect.
If the international filing date is prior to September 16, 2012, and the basic national fee has been paid and the copy of the international application (if required) has been received not later than the expiration of 30 months from the priority date, but the required oath or declaration, translation, search fee (37 CFR 1.492(b) ), examination fee (37 CFR 1.492(c) ), or application size fee (37 CFR 1.492(j) ) has not been filed prior to commencement of the national stage (see MPEP § 1893.01), the Office will send applicant a notice identifying any deficiency and provide a period of time to correct the deficiency as set forth in 37 CFR 1.495(c). The time period usually set is 2 months from the date of the notification by the Office or 32 months from the priority date, whichever is later. This period may be extended for up to 5 additional months pursuant to the provisions of 37 CFR 1.136(a). Failure to timely file the proper reply to the notification will result in abandonment of the national stage application. The processing fee set forth in 37 CFR 1.492(i) will be required for acceptance of an English translation of the international application later than the expiration of thirty months after the priority date, and the surcharge fee set forth in 37 CFR 1.492(h) will be required for acceptance of any of the search fee, examination fee, or oath or declaration of the inventor after the date of commencement. See pre-AIA 37 CFR 1.495(c)(3).
If the international filing date is on or after September 16, 2012, the filing of the oath or declaration may be postponed until the application is otherwise in condition for allowance if applicants submit an application data sheet in accordance with 37 CFR 1.76 identifying each inventor by the inventor’s legal name, the mailing address where each inventor customarily receives mail, and the residence of each inventor, if the inventor lives at a location which is different from where the inventor customarily receives mail. 37 CFR 1.495(c)(3).
For further information regarding the oath or declaration required under 35 U.S.C. 371(c)(4) and 37 CFR 1.497, including for early entry and RCE filing, see MPEP § 1893.01(e).
For further information regarding the translation required under 35 U.S.C. 371(c)(2) and 37 CFR 1.495(c), see MPEP § 1893.01(d).
The claims of an international application may be amended under PCT Article 19 after issuance of the search report. The description and drawings may not be amended under PCT Article 19. The amendment is forwarded to the U.S. Designated Office by the International Bureau for inclusion in the U.S. national stage application. Article 19 amendments including a complete claim set in English will be entered by replacing the original English language claims of the international application with the amended claim set. If the Article 19 amendments were made in a language other than English, applicant must provide an English translation for the U.S. national stage application. The Article 19 amendment(s) and the English translation of the amendment(s) must be received by the Office by the date of commencement of the national stage (see MPEP § 1893.01). Otherwise, the amendment(s) will be considered to be canceled, 35 U.S.C. 371(d). If such canceled amendments are desired, they must be offered under 37 CFR 1.121 as a preliminary amendment or a responsive amendment under 37 CFR 1.111. In this regard, the "Transmittal Letter To The United States Designated/Elected Office (DO/EO/US) Concerning A Submission Under 35 U.S.C. 371" (Form PTO-1390) available at www.uspto.gov/patent/patents-forms includes a check box by which the applicant may expressly instruct the U.S. Designated/Elected Office not to enter the Article 19 amendment(s) in the United States national stage application.
Article 19 amendments filed before July 1, 2009 were not required to include a complete claim set and the pages of the translation would not have been entered as replacement claim sheets where entry would have resulted in an inconsistency in the flow of the claims from the bottom of one page to the top of the following page. In such situations, applicants are encouraged to submit a preliminary amendment in accordance with 37 CFR 1.121 to obtain entry of the desired changes.
Amendments to the international application that were properly made under PCT Article 34 during the international preliminary examination phase (i.e., Chapter II) will be annexed by the International Preliminary Examining Authority to the international preliminary examination report (IPER) and communicated to the elected Offices. See PCT Article 36, PCT Rule 70.16, and MPEP § 1893.03(e). If these annexes are in English, they will normally be entered into the U.S. national stage application by the Office absent a clear instruction by the applicant that the annexes are not to be entered. In this regard, the "Transmittal Letter To The United States Designated/Elected Office (DO/EO/US) Concerning A Submission Under 35 U.S.C. 371" (Form PTO-1390) available at www.uspto.gov/patent/patents-forms includes a check box by which the applicant may expressly instruct the U.S. Designated/Elected Office not to enter the Article 34 amendment(s) in the United States national stage application. However, if entry of the replacement sheets will result in an obvious inconsistency in the description, claims or drawings of the international application, then the annexes will not be entered. If the annexes are in a foreign language, a proper translation of the annexes must be furnished to the Office not later than the expiration of 30 months from the priority date, unless a period has been set pursuant to 37 CFR 1.495(c) to furnish an oath or declaration, English translation of the international application, search fee (37 CFR 1.492(b) ), examination fee (37 CFR 1.492(c) ), or application size fee (37 CFR 1.492(j) ), in which case the translations of the annexes, accompanied by the processing fee set forth in 37 CFR 1.492(f), may be submitted within the period set pursuant to 37 CFR 1.495(c). See 37 CFR 1.495(e). Annexes for which translations are not timely received will be considered canceled. Amendments made under PCT Article 34 to the international application after commencement and entry into the U.S. national phase (see MPEP § 1893.01) will not be considered in a U.S. national stage application. However, applicants may still amend the U.S. national stage application by way of a preliminary amendment submitted in accordance with 37 CFR 1.115 and 37 CFR 1.121.
Where an English translation of the annexes is provided, the translation must be such that the translation of the originally filed application can be changed by replacing the originally filed application page(s) (of translation) with substitute page(s) of translation of the annex. Thus, applicant should check to be sure that the English translation can be entered by substituting the pages of translation for corresponding pages of the description or claims of the international application without leaving an inconsistency. If entry of the page of translation causes inconsistencies in the description or claims of the international application the translation will not be entered. Non-entry of the annexes will be indicated on the "NOTICE OF ACCEPTANCE OF APPLICATION UNDER 35 U.S.C. 371 AND 37 CFR 1.495" (Form PCT/DO/EO/903). For example, if the translation of the originally filed application has a first page which ends with the first part of paragraph 0012, with the remainder of paragraph 0012 on the next page then the translation of the annex of the first page must include a substitute page or pages ending with the exact same first part of paragraph 0012. This enables the original translated first page of description to be replaced by the translation of the annex without changing the subsequent unamended page(s). Alternatively applicant may submit a preliminary amendment in accordance with 37 CFR 1.121. The fact that an amendment made to the international application during the international phase was entered in the national stage application does not necessarily mean that the amendment is proper. Specifically, amendments are not permitted to introduce "new matter" into the application. See PCT Article 34(2)(b). Where it is determined that such amendments introduce new matter into the application, then the examiner should proceed as in the case of regular U.S. national applications filed under 35 U.S.C. 111(a) by requiring removal of the new matter and making any necessary rejections to the claims. See MPEP §§ 608.04 and 2163.06.
For the manner of making amendments and the required format, see the applicable U.S. regulations, in particular 37 CFR 1.121 and 1.125. One of the requirements for effectively amending claims in a national phase application is a complete listing of all claims ever presented, including the text of all pending and withdrawn claims. The status of every claim in such listing must be indicated after its claim number by one of the following identifiers in a parenthetical expression: (Original), (Currently Amended), (Canceled), (Withdrawn), (Previously Presented), (New), and (Not Entered). However, to prevent delays in prosecution, the Office may waive certain provisions of 37 CFR 1.121 and accept alternative status identifiers not specifically set forth in 37 CFR 1.121(c). Accordingly claim listings that include alternative status identifiers as set forth in MPEP § 714, subsection II.C, item (E) will be accepted if the amendment otherwise complies with 37 CFR 1.121. See MPEP § 714, subsection II.C, item (E) and Acceptance of Certain Non-Compliant Amendments Under 37 CFR 1.121(c), 1296 OG 27 (July 5, 2005).
All "currently amended" claims must include markings to indicate the changes made relative to the immediate prior version of the claims: underlining to indicate additions, strike-through or double brackets for deletions (see 37 CFR 1.121(c) for further details regarding the format of claim amendments). Applicants should note that, in an amendment to the claims filed in a national phase application, the status identifier "original" must be used for claims that had been presented on the international filing date and not modified or canceled. The status identifier "previously presented" must be used in any amendment submitted during the national phase for any claims added or modified under PCT Articles 19 or 34 in the international phase that were subsequently entered in the national phase. The status identifier "canceled" must be used in any amendment submitted during the national phase for any claims canceled under a PCT Article 19 or 34 amendment in the international phase and subsequently entered in the national phase.
Example 1: Original claims 1-10; Article 19/34 filed with claims 1-20 listed on the replacement sheet wherein claims 1-10 were unchanged and claims 11-20 were added; the status of the claims prior to any further amendment under 37 CFR 1.121 would be as follows: claims 1-10 as "original" and claims 11-20 as "previously presented."
Example 2: Original claims 1-10; Article 19/34 filed with claims 1-9 listed on the replacement sheet wherein claims 1-9 were unchanged and claim 10 was cancelled; the status of the claims prior to any further amendment under 37 CFR 1.121 would be as follows: claims 1-9 as "original" and claim 10 as "cancelled."
Example 3: Original claims 1-10; Article 19/34 filed with claims 1-9 listed on the replacement sheet wherein claim 1 was unchanged, claim 2 was cancelled and claims 3-10 were renumbered as claims 2-9; the status of the claims prior to any further amendment under 37 CFR 1.121 would be as follows: claim 1 as "original,", claims 2-9 as "previously presented" and claim 10 as "cancelled."
Example 4: Original claims 1-10; Article 19/34 filed with claims 1-10 listed on the replacement sheet wherein claims 1 and 3-10 were unchanged and claim 2 was cancelled; the status of the claims prior to any further amendment under 37 CFR 1.121 would be as follows: claims 1 and 3-10 as "original" and claim 2 as "cancelled."
Proposed amendments that are not submitted in compliance with the applicable regulations will not be entered. For example, the submission with the national phase documents of a revised set of claims, absent a preliminary amendment to the claims in compliance with 37 CFR 1.121(c), will not be effective to amend the claims of record in the application.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012]
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[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012]
If an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent on behalf of the inventor. If an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention. See § 1.64 concerning the execution of a substitute statement by a legal representative in lieu of an oath or declaration.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012]
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012]
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In general, for U.S. national stage applications having an international filing date prior to September 16, 2012, the inventors are required to be the applicants. The America Invents Act (AIA) amended 35 U.S.C. 118 to expand who may be an applicant in patent applications. Consequently, for national stage applications having an international filing date on or after September 16, 2012, the applicant may be: (a) the inventor(s); (b) the legal representative of a deceased or legally incapacitated inventor; (c) the assignee; (d) the obligated assignee (i.e., a person to whom the inventor is under an obligation to assign the invention); or (e) a person who otherwise shows proprietary interest in the application. See 37 CFR 1.42, 1.43, 1.45, and 1.46.
For national stage applications having an international filing date on or after September 16, 2012, the person identified in the international stage as the applicant for the United States will normally be considered the applicant for the U.S. national stage application. See 37 CFR 1.46(b).
Where the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: the fee set forth in 37 CFR 1.17(g), a showing that such person has sufficient proprietary interest in the matter, and a statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties. See 37 CFR 1.46(b)(2).
The name of the applicant may be corrected or updated, or the applicant may be changed, in accordance with the procedure set forth in 37 CFR 1.46(c). A request to change the applicant under 37 CFR 1.46(c)(2) must include an ADS specifying the corrected applicant and a statement under 37 CFR 3.73. The 37 CFR 3.73 statement must be furnished before or concurrently with the ADS specifying the corrected applicant.
Because the national stage fees are subject to change, applicants and examiners should always consult the Official Gazette for the current fee listing.
The basic national fee must be paid prior to the expiration of 30 months from the priority date to avoid abandonment of the international application as to the United States. This time period is not extendable. 37 CFR 1.495(a) - (b). This is distinguished from U.S. national application filings under 35 U.S.C. 111(a) in which the basic filing fee due on filing may be later accepted with a surcharge. Accordingly, in situations in which a payment of fees has been made in a national stage application prior to the expiration of 30 months from the priority date, but the applicant has not specified a sufficient amount for the payment of the basic national fee, the Office will apply the payment first to the basic national fee regardless of whether the applicant specified the fees to which the payment is to be applied.
Fees under 37 CFR 1.16 relate to national applications under 35 U.S.C. 111(a), and not to international applications entering the national stage under 35 U.S.C. 371. National stage fees are specifically provided for in 37 CFR 1.492. However, an authorization to charge fees under 37 CFR 1.16 in an international application entering the national stage under 35 U.S.C. 371 will be treated as an authorization to charge fees under 37 CFR 1.492. See 37 CFR 1.25(b). Accordingly, applications will not be held abandoned if an authorization to charge fees under 37 CFR 1.16 has been provided instead of an authorization to charge fees under 37 CFR 1.492.
A preliminary amendment accompanying the initial national stage submission under 35 U.S.C. 371 that is effective to cancel claims and/or eliminate multiple dependent claims will be effective to reduce the number of claims to be considered in calculating extra claim fees required under 37 CFR 1.492(d) - (e) and/or eliminate the multiple dependent claim fee required under 37 CFR 1.492(f). A subsequently filed amendment canceling claims and/or eliminating multiple dependent claims will not entitle applicant to a refund of fees previously paid. See MPEP §§ 607 and 608.
The application size fee for a national stage application (37 CFR 1.492(j) ) is determined on the basis of the international application as published by WIPO pursuant to PCT Article 21. Specifically, the application size fee is calculated on the basis of the number of sheets of specification (including the description, claims, abstract, and, if present, a sequence listing in portable document format (PDF)) and drawings present in the published international application. This calculation is made without regard to the language of publication. Certain other sheets typically present in the international publication are not taken into account in determining the application size fee, e.g., Article 19 amendments/statement, the international search report, and any additional bibliographic sheets (other than the cover sheet containing the abstract). Nor are Article 34 amendments or preliminary amendments taken into account in determining the application size fee.
The processing fee set forth in 37 CFR 1.492(i) will be required for acceptance of an English translation of the international application later than the expiration of thirty months after the priority date, and the surcharge fee set forth in 37 CFR 1.492(h) will be required for acceptance of any of the search fee, examination fee, or inventor’s oath or declaration after the date of commencement. 37 CFR 1.495(c)(4).
Applicants entering the national stage in the U.S. are required to file an English translation of the international application if the international application was filed in another language and was not published under PCT Article 21(2) in English. 35 U.S.C. 371(c)(2) and 37 CFR 1.495(c). For international applications having an international filing date on or after July 1, 2022, an English translation is required for any sequence listing in XML format ("Sequence Listing XML") containing non-English language values for any language-dependent free text qualifiers in accordance with 37 CFR 1.831 through 1.834. For international applications having an international filing date before July 1, 2022, 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). See 37 CFR 1.495(c). The translation must be a translation of the international application as filed or with any changes which have been properly accepted under PCT Rule 26 or any rectifications which have been properly accepted under PCT Rule 91. A translation of less than all of the international application (e.g., a translation that fails to include a translation of text contained in the drawings or a translation that includes a translation of claims amended under PCT Article 19 or 34 but does not include a translation of the original claims) is unacceptable. In addition, a translation that includes modifications other than changes that have been properly accepted under PCT Rule 26 or 91 (e.g., a translation that includes headings that were not present in the international application as originally filed) is unacceptable. A translation of words contained in the drawings must be furnished either in the form of new drawings or in the form of a copy of the original drawings with the translation pasted on the original text matter. See PCT Rule 49.5(d).
Amendments, even those considered to be minor or to not include new matter, may not be incorporated into the translation. If an amendment to the international application as filed is desired for the national stage, it may be submitted in accordance with 37 CFR 1.121. An amendment filed under 37 CFR 1.121 should be submitted within 3 months from the date the national stage is entered as set forth 37 CFR 1.491. See 37 CFR 1.115(b)(3)(iii). If applicant has timely paid the basic national fee and submitted the copy of the international application but the translation is missing or is defective, a Notification of Missing Requirements (PCT/DO/EO/905) will be sent to applicant setting a period to correct any missing or defective requirements. The time period is 32 months from the priority date or 2 months from the date of the notice, whichever expires later. The time period may be extended for up to five additional months as provided in 37 CFR 1.136(a). A processing fee is required for accepting a translation after 30 months from the priority date. See 37 CFR 1.492(i).
Pursuant to PCT Rule 48.3(c), if the international application is published in a language other than English, the publication shall include an English translation of the title of the invention, the abstract, and any text matter pertaining to the figure or figures accompanying the abstract. The translations shall be prepared under the responsibility of the International Bureau.
A translation of the international application as filed and identified as provided in 37 CFR 1.417 submitted for the purpose of obtaining provisional rights pursuant to 35 U.S.C. 154(d)(4) can be relied on to fulfill the translation requirement under 35 U.S.C. 371(c)(2) in a national stage application.
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Pursuant to 35 U.S.C. 371(c)(4), the applicant for a national stage application is required to file an oath or declaration of the inventor (or other person authorized under 35 U.S.C. chapter 11) complying with the requirements of 35 U.S.C. 115 and with regulations prescribed for oaths or declarations of applicants. The America Invents Act (AIA) amended 35 U.S.C. 115 with effect for applications filed on or after September 16, 2012. As a consequence of this change, the oath or declaration requirements for a national stage application differ depending on the international filing date of the national stage application, as set forth below.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012]
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[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 on or after September 16, 2012]
Applicants entering the national stage under 35 U.S.C. 371 for an international application having an international filing date on or after September 16, 2012 are required to file an inventor’s oath or declaration in accordance with 37 CFR 1.497 unless a declaration in compliance with 37 CFR 1.63 was previously submitted in the international phase under PCT Rule 4.17(iv) within the time limits provided for in PCT Rule 26ter.1.
The inventor’s oath or declaration will be accepted as complying with 35 U.S.C. 371(c)(4) if it complies with the minimum requirements set forth in 37 CFR 1.497(b). However, if the inventor’s oath or declaration does not satisfy all the requirements of 37 CFR 1.63 or 1.64, the applicant will be required to comply with the outstanding requirements. See 37 CFR 1.497(c).
The filing of the inventor’s oath or declaration may be postponed until the application is otherwise in condition for allowance if applicant submits an application data sheet in accordance with 37 CFR 1.76 identifying each inventor by his or her legal name, the mailing address where each inventor customarily receives mail, and the residence of each inventor, if the inventor lives at a location which is different from where the inventor customarily receives mail. See 37 CFR 1.495(c)(3). Postponement of the filing of the inventor’s oath or declaration pursuant to 37 CFR 1.495(c) will not postpone the requirement to pay the surcharge fee under 37 CFR 1.492(h) for filing the inventor’s oath or declaration after the date of commencement. As discussed in MPEP § 706.07(h), subsection I, notwithstanding 37 CFR 1.495(c)(3) permitting postponement, all required inventor’s oaths or declarations (or substitute statements) must be filed prior to or with a request for continued examination (RCE) under 37 CFR 1.114. Early national stage entry under 35 U.S.C. 371(f) also requires the submission of the oath or declaration required by 35 U.S.C. 371(c)(4) and submission also may not be postponed in this situation.
If the basic national fee and copy of the international application have been received by the expiration of 30 months from the priority date, but applicant has not submitted 1) the required inventor’s oath or declaration, or 2) an application data sheet in compliance with 37 CFR 1.495(c)(3), the Office will send applicant a Notification of Missing Requirements (Form PCT/DO/EO/905) setting a time period to submit the required inventor’s oath or declaration or application data sheet and surcharge fee under 37 CFR 1.492(h) unless previously paid. Failure to timely file the required reply will result in abandonment of the application.
The inventor’s oath or declaration must be executed by each inventor, except as provided under 37 CFR 1.64. The inventorship of an international application entering the national stage under 35 U.S.C. 371 having an international filing date on or after September 16, 2012, is the inventor or joint inventors set forth in an application data sheet in accordance with 37 CFR 1.76 accompanying the initial submission under 35 U.S.C. 371. If the initial submission under 35 U.S.C. 371 is not accompanied by an application data sheet in accordance with 37 CFR 1.76, the inventorship is the inventor or joint inventors set forth in the international application, which includes any change effected under PCT Rule 92bis . See 37 CFR 1.41(e). Inventorship may be corrected under the procedure set forth in 37 CFR 1.48(a). The name of an inventor may be corrected or updated under the procedure set forth in 37 CFR 1.48(f).
If the inventor is deceased, is under legal incapacity, has refused to execute the oath or declaration under 37 CFR 1.63, or cannot be found or reached after diligent effort, the applicant under 37 CFR 1.43, 1.45 or 1.46 may execute a substitute statement under 1.64 in lieu of an oath or declaration under 37 CFR 1.63.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111(a) or 363 prior to September 16, 2012]
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[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 prior to September 16, 2012]
Applicants entering the national stage under 35 U.S.C. 371 for an international application having an international filing date prior to September 16, 2012 are required to file an oath or declaration of the inventor in accordance with pre-AIA 37 CFR 1.497(a) and (b). If the basic national fee and copy of the international application have been received by the expiration of 30 months from the priority date, but the required oath or declaration has not been filed, the Office will send applicant a Notification of Missing Requirements (Form PCT/DO/EO/905) setting a time period to correct any missing or defective requirements and to submit the surcharge fee required under 37 CFR 1.492(h) unless previously paid. Failure to timely file the required oath or declaration will result in abandonment of the application.
An oath or declaration satisfying the requirements of pre-AIA 37 CFR 1.497(a) - (b) will be sufficient for the purposes of entering the U.S. national phase. However, if the oath or declaration fails to also comply with the additional requirements for oaths and declarations set forth in 37 CFR 1.63, applicants will need to submit a supplemental oath or declaration, or an application data sheet where permitted under 37 CFR 1.63(c), to correct the deficiency. See 37 CFR 1.497(c).
In general, the requirement for an oath or declaration in compliance with 37 CFR 1.497(a) - (b) will have been previously satisfied if a declaration in compliance with PCT Rule 4.17(iv) executed by all the inventors was submitted within the time limits provided in PCT Rule 26ter.1 in the international phase. However, if the inventorship was changed in the international application under PCT Rule 92bis such that the inventorship identified in the PCT Rule 4.17(iv) declaration no longer corresponds to that of the international application (see pre-AIA 37 CFR 1.41(a)(4) ), then a new oath or declaration in accordance with 37 CFR 1.497(a) - (b) may be required to enter the national stage. See pre-AIA 37 CFR 1.497(f)(2). Similarly, a new oath or declaration in compliance with 37 CFR 1.497(a) - (b) is required where the PCT Rule 4.17(iv) declaration was executed prior to a change in the international filing date pursuant to PCT Rule 20.5(c). See pre-AIA 37 CFR 1.497(f)(1). In addition, where a priority claim has been corrected or added pursuant to PCT Rule 26.2bis after execution of the PCT Rule 4.17(iv) declaration, then a supplemental oath or declaration, or an application data sheet, identifying the correct priority claim will be required. See pre-AIA 37 CFR 1.497(g).
The inventorship of an international application entering the national stage under 35 U.S.C. 371 having an international filing date before September 16, 2012 is that inventorship set forth in the international application, which includes any changes effected under PCT Rule 92bis. See pre-AIA 37 CFR 1.41(a)(4). Accordingly, an oath or declaration that names an inventive entity different than that set forth in the international application will not be accepted for purposes of entering the U.S. national phase unless the inventorship is corrected. See the procedures set forth in pre-AIA 37 CFR 1.497(d) and 37 CFR 1.48(a) for correcting inventorship. If an inventor refuses to execute the oath or declaration or cannot be found or reached after diligent effort, applicant may file an oath or declaration and a petition in accordance with pre-AIA 37 CFR 1.47. Similarly, where an inventor is deceased or legally incapacitated, an oath or declaration may be made in accordance with the provisions of pre-AIA 37 CFR 1.42 or 1.43. See pre-AIA 37 CFR 1.497(b).
Where there has been no change of inventorship but there is a discrepancy between the name of an inventor as indicated in the international application during the international phase and the corresponding name indicated in an oath or declaration submitted under 37 CFR 1.497, correction will be required to accept the oath or declaration with the different name. Effective September 16, 2012, the procedure set forth in 37 CFR 1.48(f) may be used to correct or update the name of an inventor in a nonprovisional application. In applications where the procedure under 37 CFR 1.48(f) is not available, correction may be made by way of petition under 37 CFR 1.182 to accept the oath or declaration with the different name.