1893.01    Commencement and Entry [R-07.2015]

35 U.S.C. 371  National stage: Commencement.

  • (a) Receipt from the International Bureau of copies of international applications with any amendments to the claims, international search reports, and international preliminary examination reports including any annexes thereto may be required in the case of international applications designating or electing the United States.
  • (b) Subject to subsection (f) of this section, the national stage shall commence with the expiration of the applicable time limit under article 22(1) or (2), or under article 39(1)(a)  of the treaty.
  • (c) The applicant shall file in the Patent and Trademark Office —
    • (1) the national fee provided in section 41(a);
    • (2) a copy of the international application, unless not required under subsection (a) of this section or already communicated by the International Bureau, and a translation into the English language of the international application, if it was filed in another language;
    • (3) amendments, if any, to the claims in the international application, made under article 19  of the treaty, unless such amendments have been communicated to the Patent and Trademark Office by the International Bureau, and a translation into the English language if such amendments were made in another language;
    • (4) an oath or declaration of the inventor (or other person authorized under chapter 11 ) complying with the requirements of section 115  and with regulations prescribed for oaths or declarations of applicants;
    • (5) a translation into the English language of any annexes to the international preliminary examination report, if such annexes were made in another language.
  • (d) The requirement with respect to the national fee referred to in subsection (c)(1), the translation referred to in subsection (c)(2), and the oath or declaration referred to in subsection (c)(4) of this section shall be complied with by the date of the commencement of the national stage or by such later time as may be fixed by the Director. The copy of the international application referred to in subsection (c)(2) shall be submitted by the date of the commencement of the national stage. Failure to comply with these requirements shall be regarded as abandonment of the application by the parties thereof, unless it be shown to the satisfaction of the Director that such failure to comply was unavoidable. The payment of a surcharge may be required as a condition of accepting the national fee referred to in subsection (c)(1) or the oath or declaration referred to in subsection (c)(4) of this section if these requirements are not met by the date of the commencement of the national stage. The requirements of subsection (c)(3) of this section shall be complied with by the date of the commencement of the national stage, and failure to do so shall be regarded as a cancellation of the amendments to the claims in the international application made under article 19  of the treaty. The requirement of subsection (c)(5) shall be complied with at such time as may be fixed by the Director and failure to do so shall be regarded as cancellation of the amendments made under article 34(2)(b)  of the treaty.
  • (e) After an international application has entered the national stage, no patent may be granted or refused thereon before the expiration of the applicable time limit under article 28  or article 41  of the treaty, except with the express consent of the applicant. The applicant may present amendments to the specification, claims, and drawings of the application after the national stage has commenced.
  • (f) At the express request of the applicant, the national stage of processing may be commenced at any time at which the application is in order for such purpose and the applicable requirements of subsection (c) of this section have been complied with.

37 C.F.R. 1.491  National stage commencement, entry, and fulfillment.

[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363  on or after September 16, 2012]

37 C.F.R. 1.491  (pre-AIA) National stage commencement and entry.

[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.

1893.01(a)    Entry via the U.S. Designated or Elected Office [R-07.2015]

PCT Article 2

Definitions

*****

  • (xiii) "designated Office" means the national Office of or acting for the State designated by the applicant under Chapter I  of this Treaty;
  • (xiv) "elected Office" means the national Office of or acting for the State elected by the applicant under Chapter II  of this Treaty;

*****

37 C.F.R. 1.414  The United States Patent and Trademark Office as a Designated Office or Elected Office.

  • (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) National stage processing for international applications entering the national stage under 35 U.S.C. 371.

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.

1893.01(a)(1)    Submissions Required by 30 Months from the Priority Date [R-10.2019]

37 C.F.R. 1.495  Entering the national stage in the United States of America.

[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363  on or after September 16, 2012]

  • (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.
  • (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 inventor’s oath or declaration (35 U.S.C. 371(c)(4)  and § 1.497 ), if a declaration of inventorship in compliance with §1.63  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 time period within which applicant must provide any omitted translation, 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 inventor’s oath or declaration must also be filed within the period specified in paragraph (c)(2) of this section, except that the filing of the inventor’s oath or declaration may be postponed until the application is otherwise in condition for allowance under the conditions specified in paragraphs (c)(3)(i) through (c)(3)(iii) of this section.
      • (i) The application contains an application data sheet in accordance with § 1.76  filed prior to the expiration of the time period set in any notice under paragraph (c)(1) identifying:
        • (A) Each inventor by his or her legal name;
        • (B) A mailing address where the inventor customarily receives mail, and residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor.
      • (ii) The applicant must file each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, no later than the date on which the issue fee for the patent is paid. If the applicant is notified in a notice of allowability that an oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, executed by or with respect to each named inventor has not been filed, the applicant must file each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, no later than the date on which the issue fee is paid to avoid abandonment. This time period is not extendable under § 1.136 (see § 1.136(c)). The Office may dispense with the notice provided for in paragraph (c)(1) of this section if each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, has been filed before the application is in condition for allowance.
      • (iii) An international application in which the basic national fee under 35 U.S.C. 41(a)(1)(F)  has been paid and for which an application data sheet in accordance with § 1.76  has been filed may be treated as complying with 35 U.S.C. 371  for purposes of eighteen-month publication under 35 U.S.C. 122(b)  and § 1.211 et seq.
    • (4) 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 inventor’s oath or declaration after the date of the commencement of the national stage (§ 1.491(a)).
    • (5) 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 identified as a submission to enter the national stage under 35 U.S.C. 371. If the documents and fees contain conflicting indications as between an application under 35 U.S.C. 111  and a submission to enter the national stage under 35 U.S.C. 371, the documents and fees will be treated as a submission to enter the national stage under 35 U.S.C. 371.
  • (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.

37 C.F.R. 1.495  (pre-AIA) Entering the national stage in the United States of America.

[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363  prior to September 16, 2012]

  • (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 time period 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.

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. 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.

It is preferable to file the required national stage items online using the EFS-Web system (further information regarding EFS-Web 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.

Similarly, 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 1.495 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 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. 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  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).

1893.01(a)(2)    Article 19 Amendment (Filed With the International Bureau) [R-10.2019]

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.

1893.01(a)(3)    Article 34 Amendments (Filed with the International Preliminary Examining Authority) [R-10.2019]

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 page which begins with claim 1 and ends with a first part of claim 2 with the remainder of claim 2 on the next page then translation of the annex to only claim 1 must include a substitute page or pages beginning with the changes to claim 1 and ending with the last of the exact same first part of claim 2. This enables the original translated first page of claims 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.

1893.01(a)(4)    Claim Amendment (Filed With the U.S. Designated or Elected Office) [R-10.2019]

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.

1893.01(b)    Applicant for a U.S. National Stage Application [R-08.2017]

37 C.F.R. 1.42  Applicant for Patent

[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111(a)  or 363 on or after September 16, 2012]

  • (a) The word "applicant" when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.
  • (b) If a person is applying for a patent as provided in § 1.46, the word "applicant" refers to the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for a patent under § 1.46 and not the inventor.
  • (c) If fewer than all joint inventors are applying for a patent as provided in § 1.45, the phrase "the applicant" means the joint inventors who are applying for the patent without the omitted inventor(s).

*****

37 C.F.R. 1.43  Application for patent by a legal representative of a deceased or legally incapacitated inventor.

[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.

37 C.F.R. 1.45  Application for patent by joint inventors.

[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111(a)  or 363 on or after September 16, 2012]

  • (a) Joint inventors must apply for a patent jointly, and each must make an inventor’s oath or declaration as required by § 1.63, except as provided for in § 1.64. If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the other joint inventor or inventors may make the application for patent on behalf of themselves and the omitted inventor. See § 1.64 concerning the execution of a substitute statement by the other joint inventor or inventors in lieu of an oath or declaration.
  • (b) Inventors may apply for a patent jointly even though:
    • (1) They did not physically work together or at the same time;
    • (2) Each inventor did not make the same type or amount of contribution; or
    • (3) Each inventor did not make a contribution to the subject matter of every claim of the application.
  • (c) If multiple inventors are named in a nonprovisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter of at least one claim of the application and the application will be considered to be a joint application under 35 U.S.C. 116. If multiple inventors are named in a provisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter disclosed in the provisional application and the provisional application will be considered to be a joint application under 35 U.S.C. 116.

37 C.F.R. 1.46  Application for patent by an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter.

[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111(a)  or 363 on or after September 16, 2012]

  • (a) A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.
  • (b) If an application under 35 U.S.C. 111  is made by a person other than the inventor under paragraph (a) of this section, the application must contain an application data sheet under § 1.76  specifying in the applicant information section (§ 1.76(b)(7) ) the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter. If an application entering the national stage under 35 U.S.C. 371, or a nonprovisional international design application, is applied for by a person other than the inventor under paragraph (a) of this section, the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter must have been identified as the applicant for the United States in the international stage of the international application or as the applicant in the publication of the international registration under Hague Agreement Article 10(3).
    • (1) If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
    • (2) If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including:
      • (i) The fee set forth in § 1.17(g);
      • (ii) A showing that such person has sufficient proprietary interest in the matter; and
      • (iii) 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.
  • (c) Any request to correct or update the name of the applicant after an applicant has been specified under paragraph (b) of this section must include an application data sheet under § 1.76  specifying the correct or updated name of the applicant in the applicant information section (§ 1.76(b)(7) ). Any request to change the applicant after an original applicant has been specified under paragraph (b) of this section must include an application data sheet under § 1.76 specifying the applicant in the applicant information section (§ 1.76(b)(7) ) and comply with §§ 3.71  and 3.73  of this title.

*****

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.

1893.01(c)    Fees [R-10.2019]

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). The search fee required under 37 CFR 1.492(b)  and examination fee required under 37 CFR 1.492(c)  are due on commencement of the national stage (37 CFR 1.491(a) ), but may be accepted later with the payment of a surcharge. 37 CFR 1.495(c)(2).

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 description (including a sequence listing in portable document format (PDF)), claims, drawings, and abstract 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, i.e., a sequence listing in ASCII text (.txt) format, Article 19 amendments, 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).

1893.01(d)    Translation [R-07.2015]

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). 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.

1893.01(e)    Inventor’s Oath or Declaration [R-07.2015]

35 U.S.C. 371  National stage: Commencement.

*****

  • (c) The applicant shall file in the Patent and Trademark Office –
    • *****
    • (4) an oath or declaration of the inventor (or other person authorized under chapter 11 ) complying with the requirements of section 115  and with regulations prescribed for oaths or declarations of applicants;

*****

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.

I.    NATIONAL STAGE APPLICATIONS HAVING AN INTERNATIONAL FILING DATE ON OR AFTER SEPTEMBER 16, 2012

37 C.F.R. 1.41  Inventorship

[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111(a)  or 363 on or after September 16, 2012]

*****

  • (e) The inventorship of an international application entering the national stage under 35 U.S.C. 371  is the inventor or joint inventors set forth in the application data sheet in accordance with § 1.76  filed with the initial submission under 35 U.S.C. 371. Unless the initial submission under 35 U.S.C. 371  is accompanied by an application data sheet in accordance with § 1.76  setting forth the inventor or joint inventors, the inventorship is the inventor or joint inventors set forth in the international application, which includes any change effected under PCT Rule 92bis.  

*****

37 C.F.R. 1.497  Inventor’s oath or declaration under 35 U.S.C. 371(c)(4).

[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363  on or after September 16, 2012]

  • (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 § 1.63  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, the applicant must file the inventor’s oath or declaration. The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent must execute an oath or declaration in accordance with the conditions and requirements of § 1.63, except as provided for in § 1.64.
  • (b) An oath or declaration under § 1.63  will be accepted as complying with 35 U.S.C. 371(c)(4)  if it complies with the requirements of §§ 1.63(a), (c) and (g). A substitute statement under § 1.64  will be accepted as complying with 35 U.S.C. 371(c)(4)  if it complies with the requirements of §§ 1.64(b)(1), (c) and (e) and identifies the person executing the substitute statement. If a newly executed inventor’s oath or declaration under § 1.63  or substitute statement under § 1.64  is not required pursuant to § 1.63(d), submission of the copy of the previously executed oath, declaration, or substitute statement under § 1.63(d)(1)  is required to comply with 35 U.S.C. 371(c)(4).
  • (c) If an oath or declaration under § 1.63, or substitute statement under § 1.64, meeting the requirements of § 1.497(b)  does not also meet the requirements of § 1.63  or § 1.64, an oath, declaration, substitute statement, or application data sheet in accordance with § 1.76  to comply with § 1.63  or § 1.64  will be required.

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. Note that early national stage entry under 35 U.S.C. 371(f)  requires the submission of the oath or declaration required by 35 U.S.C. 371(c)(4)  and submission 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.

II.    NATIONAL STAGE APPLICATIONS HAVING AN INTERNATIONAL FILING DATE BEFORE SEPTEMBER 16, 2012

37 C.F.R. 1.41 (pre-AIA)  Applicant for Patent

[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111(a)  or 363 prior to September 16, 2012]

*****

  • (a)
    • *****
    • (4) The inventorship of an international application entering the national stage under 35 U.S.C. 371  is that inventorship set forth in the international application, which includes any change effected under PCT Rule 92bis . See § 1.497(d) and (f) for filing an oath or declaration naming an inventive entity different from the inventive entity named 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 declaration filed under PCT Rule 4.17(iv)  (§ 1.48(f)(1) does not apply to an international application entering the national stage under 35 U.S.C. 371 ).

*****

37 C.F.R. 1.497 (pre-AIA)  Oath or declaration under 35 U.S.C. 371(c)(4).

[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363  prior to September 16, 2012]

  • (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 26 ter.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 specification 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); and
    • (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 20.5(c)  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 26 bis  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.

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.