MPEP § 1893.01(a)
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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.