1893.01   Commencement and Entry [R-3]

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)  of this title;
    • (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  of this title) complying with the requirements of section 115  of this title 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 and entry.

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 stated in 37 CFR 1.491(b)  .

1893.01(a)   Entry via the U.S. Designated or Elected Office [R-3]

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) Accepting for national stage examination international applications which satisfy the requirements of 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. The procedure for entry is as prescribed in 37 CFR 1.495  .

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

  • (a) The applicant in an international application must fulfill the requirements of 35 U.S.C. 371  within the time periods set forth in paragraphs (b) and (c) of this section in order to prevent the abandonment of the international application as to the United States of America. The thirty-month time period set forth in paragraphs (b), (c), (d), (e) and (h) of this section may not be extended. International applications for which those requirements are timely fulfilled will enter the national stage and obtain an examination as to the patentability of the invention in the United States of America.
  • (b) To avoid abandonment of the application, the applicant shall furnish to the United States Patent and Trademark Office not later than the expiration of thirty months from the priority date:
    • (1) A copy of the international application, unless it has been previously communicated by the International Bureau or unless it was originally filed in the United States Patent and Trademark Office; and
    • (2) The basic national fee (see § 1.492  (a)).
  • (c)
    • (1) If applicant complies with paragraph (b) of this section before expiration of thirty months from the priority date, the Office will notify the applicant if he or she has omitted any of:
      • (i) A translation of the international application, as filed, into the English language, if it was originally filed in another language and if any English language translation of the publication of the international application previously submitted under 35 U.S.C. 154  (d) (§ 1.417  ) is not also a translation of the international application as filed (35 U.S.C. 371  (c)(2));
      • (ii) The oath or declaration of the inventor (35 U.S.C. 371  (c)(4) and § 1.497  ), if a declaration of inventorship in compliance with § 1.497  has not been previously submitted in the international application under PCT Rule 4.17  (iv) within the time limits provided for in PCT Rule 26  ter .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.

1893.01(a)(1)   Submissions Required by 30 Months from the Priority Date [R-5]

To begin entry into the national stage, 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 on or before 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 prior to 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.

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 may file these items using the Express Mail mailing procedures set forth in 37 CFR 1.10  . In addition, applicants may now file national stage submissions online using the EFS-Web system. Further information regarding EFS-Web is available at http://www.uspto.gov/ebc/efs_help.html.

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 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 provided to the U.S. Designated or Elected Office by the International Bureau (the copy is ordinarily communicated to the Office on the day of publication of the international application at about 18 months from the priority date). The International Bureau also mails a confirmation (Form PCT/IB/308) to applicant upon which applicant can rely that the copy has been provided. This confirmation constitutes conclusive evidence of transmission of the international application. See PCT Rule 47.1  (c).

If the basic national fee has been paid and the copy of the international application (if required) has been received by 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. 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  for entry into the U.S. national phase, 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-3]

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 which were made in English will be entered by substituting each page of amendment for the corresponding English language page of claims of the international application. 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  .

Applicants entering the national stage in the U.S. are encouraged to submit an amendment in accordance with 37 CFR 1.121  rather than an English translation of an Article 19  amendment. Sometimes when an Article 19  amendment is translated into English, it cannot be entered. That is, each page of an Article 19  amendment must be entered by substituting a page of amendment for the corresponding page of claims of the international application. After translation of a page, the translated page may no longer correspond to a page of the claims of the international application such that the amendment is capable of entry by substituting the page of English translation (of the amendment) for the corresponding page of claims of the international application without leaving an inconsistency. Where applicant chooses to submit an English translation of the Article 19  amendment, applicant should check to be sure that the English translation can be entered by substituting the pages of translation for corresponding pages of the claims of the international application without leaving an inconsistency. If entry of the page of translation causes inconsistencies in the claims of the international application the translation will not be entered. 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 Article 19 amendment 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 amendment without changing the subsequent unamended page(s). Alternatively, applicant may submit a preliminary amendment in accordance with 37 CFR 1.121  .

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

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. 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 claims of the international application without leaving an inconsistency. If entry of the page of translation causes inconsistencies in the specification 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(c)   Fees [R-6]

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)(3).

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, 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., 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. For tables related to sequence listings that were submitted under PCT Administrative Instructions Section 801  in the international stage and furnished in the U.S. national stage:

    • (A) as a text file via EFS-Web or in an electronic medium in accordance with 37 CFR 1.52  (f)(1), each three kilobytes of content submitted shall be counted as a sheet of paper;
    • (B) on paper, the number of sheets actually received are counted;
    • (C) as a PDF file submitted through EFS-Web, the number of pages as rendered by the Office electronic filing system are counted. The paper size equivalency provisions of 37 CFR 1.52  (f)(2) for EFS-Web filings do not apply to national stage submissions.

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. 37 CFR 1.495  (c)(3).

1893.01(d)   Translation [R-5]

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 after completion of the 35 U.S.C. 371(c)  requirements for entry into the national stage. 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)   Oath/Declaration [R-6]

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

  • (a) When an applicant of an international application desires to enter the national stage under 35 U.S.C. 371  pursuant to § 1.495  , and a declaration in compliance with this section has not been previously submitted in the international application under PCT Rule 4.17(iv)  within the time limits provided for in PCT Rule 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 92 bis   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 92 bis   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 in the U.S. are required to file an oath or declaration of the inventor in accordance with 37 CFR 1.497(a)  and (b). If the basic national fee and copy of the international application has 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. 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)  . Failure to timely file the required oath or declaration will result in abandonment of the application.

An oath or declaration satisfying the requirements of 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) and executed by all the inventors was submitted within the time limits provided in PCT Rule 26 ter .1   in the international phase. However, if the inventorship was changed in the international application under PCT Rule 92 bis   such that the inventorship identified in the PCT Rule 4.17  (iv) declaration no longer corresponds to that of the international application (see 37 CFR 1.41(a)(4)  ), then a new oath or declaration in accordance with 37 CFR 1.497  (a)-(b) will be required to enter the national stage. See 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 37 CFR 1.497  (f)(1). In addition, where a priority claim has been corrected or added pursuant to PCT Rule 26 bis   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 37 CFR 1.497  (g).

  CORRECTION OF INVENTORSHIP

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 changes effected under PCT Rule 92 bis   . See 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 requirements under 37 CFR 1.497  (d) are satisfied. These requirements include: (A) 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; (B) the processing fee set forth in 37 CFR 1.17(i)  ; and (C) the written consent of the assignee if an assignment has been executed by any of the original named inventors (see 37 CFR 3.73  (b)).

If an inventor refuses to execute the oath or declaration or cannot be found or reached after diligent effort, applicant must file an oath or declaration and a petition in accordance with 37 CFR 1.47  . See 37 CFR 1.497  (b) and MPEP § 409.03 . Similarly, where an inventor is deceased or legally incapacitated, an oath or declaration in accordance with the provisions of 37 CFR 1.42  or 1.43  must be provided. See 37 CFR 1.497  (b) and MPEP § 409.01 and § 409.02 .

Where there has been no change of inventorship but the name of an inventor indicated in the international application during the international phase has changed such that the inventor’s name is different from the corresponding name indicated in an oath or declaration submitted under 37 CFR 1.497  , for example, on account of marriage, then a petition under 37 CFR 1.182  will be required to accept the oath or declaration with the changed name. See MPEP § 605.04 (c). However, where the discrepancy between the name of the inventor indicated in the international application during the international phase and the name of the inventor as it appears in the oath or declaration submitted under 37 CFR 1.497  is the result of a typographical or transliteration error, then a petition under 37 CFR 1.182  will not be required. In such case, the Office should simply be notified of the error. Similarly, a typographical or transliteration error in the name of an inventor identified in a previously submitted oath or declaration may be corrected by simply notifying the Office of the error. A new oath or declaration is not required to correct such error. See MPEP § 201.03 and § 605.04 (g).