
[Code of Federal Regulations]
[Title 37, Volume 1]
[Revised as of July 1, 2001]
From the U.S. Government Printing Office via GPO Access
[CITE: 37CFR1]

[Page 112-131]
 
              TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS
 
          CHAPTER I--UNITED STATES PATENT AND TRADEMARK OFFICE,
                         DEPARTMENT OF COMMERCE
 
PART 1--RULES OF PRACTICE IN PATENT CASES--Table of Contents
 
Subpart C--International Processing Provisions

    Authority: Pub. L. 94-131, 89 Stat. 685; Pub. L. 99-616, 35 U.S.C. 
351 through 376.

    Source: 43 FR 20466, May 11, 1978, unless otherwise noted.

[[Page 113]]

                           General Information

Sec. 1.401  Definitions of terms under the Patent Cooperation Treaty.

    (a) The abbreviation PCT and the term Treaty mean the Patent 
Cooperation Treaty.
    (b) International Bureau means the World Intellectual Property 
Organization located in Geneva, Switzerland.
    (c) Administrative Instructions means that body of instructions for 
operating under the Patent Cooperation Treaty referred to in PCT Rule 
89.
    (d) Request, when capitalized, means that element of the 
international application described in PCT Rules 3 and 4.
    (e) International application, as used in this subchapter is defined 
in Sec. 1.9(b).
    (f) Priority date for the purpose of computing time limits under the 
Patent Cooperation Treaty is defined in PCT Art. 2 (xi). Note also 
Sec. 1.465.
    (g) Demand, when capitalized, means that document filed with the 
International Preliminary Examining Authority which requests an 
international preliminary examination.
    (h) Annexes means amendments made to the claims, description or the 
drawings before the International Preliminary Examining Authority.
    (i) Other terms and expressions in this subpart C not defined in 
this section are to be taken in the sense indicated in PCT Art. 2 and 35 
U.S.C. 351.

[43 FR 20466, May 11, 1978, as amended at 52 FR 20047, May 28, 1987]

Sec. 1.412  The United States Receiving Office.

    (a) The United States Patent and Trademark Office is a Receiving 
Office only for applicants who are residents or nationals of the United 
States of America.
    (b) The Patent and Trademark Office, when acting as a Receiving 
Office, will be identified by the full title ``United States Receiving 
Office'' or by the abbreviation ``RO/US.''
    (c) The major functions of the Receiving Office include:
    (1) According of international filing dates to international 
applications meeting the requirements of PCT Art. 11(1), and PCT Rule 
20;
    (2) Assuring that international applications meet the standards for 
format and content of PCT Art. 14(1), PCT Rule 9, 26, 29.1, 37, 38, 91, 
and portions of PCT Rules 3 through 11;
    (3) Collecting and, when required, transmitting fees due for 
processing international applications (PCT Rule 14, 15, 16);
    (4) Transmitting the record and search copies to the International 
Bureau and International Searching Authority, respectively (PCT Rules 22 
and 23); and
    (5) Determining compliance with applicable requirements of part 5 of 
this chapter.
    (6) Reviewing and, unless prescriptions concerning national security 
prevent the application from being so transmitted (PCT Rule 19.4), 
transmitting the international application to the International Bureau 
for processing in its capacity as a Receiving Office:
    (i) Where the United States Receiving Office is not the competent 
Receiving Office under PCT Rule 19.1 or 19.2 and Sec. 1.421(a); or
    (ii) Where the international application is not in English but is in 
a language accepted under PCT Rule 12.1(a) by the International Bureau 
as a Receiving Office; or
    (iii) Where there is agreement and authorization in accordance with 
PCT Rule 19.4(a)(iii).

[43 FR 20466, May 11, 1978, as amended at 60 FR 21439, May 2, 1995; 63 
FR 29617, June 1, 1998]

Sec. 1.413  The United States International Searching Authority.

    (a) Pursuant to appointment by the Assembly, the United States 
Patent and Trademark Office will act as an International Searching 
Authority for international applications filed in the United States 
Receiving Office and in other Receiving Offices as may be agreed upon by 
the Commissioner, in accordance with agreement between the Patent and 
Trademark Office and the International Bureau (PCT Art. 16(3)(b)).
    (b) The Patent and Trademark Office, when acting as an International 
Searching Authority, will be identified

[[Page 114]]

by the full title ``United States International Searching Authority'' or 
by the abbreviation ``ISA/US.''
    (c) The major functions of the International Searching Authority 
include:
    (1) Approving or establishing the title and abstract;
    (2) Considering the matter of unity of invention;
    (3) Conducting international and international-type searches and 
preparing international and international-type search reports (PCT Art. 
15, 17 and 18, and PCT Rules 25, 33 to 45 and 47); and
    (4) Transmitting the international search report to the applicant 
and the International Bureau.

Sec. 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.

[52 FR 20047, May 28, 1987]

Sec. 1.415  The International Bureau.

    (a) The International Bureau is the World Intellectual Property 
Organization located at Geneva, Switzerland. It is the international 
intergovernmental organization which acts as the coordinating body under 
the Treaty and the Regulations (PCT Art. 2 (xix) and 35 U.S.C. 351 (h)).
    (b) The major functions of the International Bureau include:
    (1) Publishing of international applications and the International 
Gazette;
    (2) Transmitting copies of international applications to Designated 
Offices;
    (3) Storing and maintaining record copies; and
    (4) Transmitting information to authorities pertinent to the 
processing of specific international applications.

Sec. 1.416  The United States International Preliminary Examining 
          Authority.

    (a) Pursuant to appointment by the Assembly, the United States 
Patent and Trademark Office will act as an International Preliminary 
Examining Authority for international applications filed in the United 
States Receiving Office and in other Receiving Offices as may be agreed 
upon by the Commissioner, in accordance with agreement between the 
Patent and Trademark Office and the International Bureau.
    (b) The United States Patent and Trademark Office, when acting as an 
International Preliminary Examining Authority, will be identified by the 
full title ``United States International Preliminary Examining 
Authority'' or by the abbreviation ``IPEA/US.''
    (c) The major functions of the International Preliminary Examining 
Authority include:
    (1) Receiving and checking for defects in the Demand;
    (2) Forwarding Demands in accordance with PCT Rule 59.3;
    (3) Collecting the handling fee for the International Bureau and the 
preliminary examination fee for the United States International 
Preliminary Examining Authority;
    (4) Informing applicant of receipt of the Demand;
    (5) Considering the matter of unity of invention;
    (6) Providing an international preliminary examination report which 
is a non-binding opinion on the questions of whether the claimed 
invention appears: to be novel, to involve an inventive step (to be 
nonobvious), and to be industrially applicable; and

[[Page 115]]

    (7) Transmitting the international preliminary examination report to 
applicant and the International Bureau.

[52 FR 20047, May 28, 1987, as amended at 63 FR 29617, June 1, 1998]

Sec. 1.417.  Submission of translation of international application.

    The submission of the international publication or an English 
language translation of an international application pursuant to 35 
U.S.C. 154(d)(4) must clearly identify the international application to 
which it pertains (Sec. 1.5(a)) and, unless it is being submitted 
pursuant to Sec. 1.494 or Sec. 1.495, be clearly identified as a 
submission pursuant to 35 U.S.C. 154(d)(4). Otherwise, the submission 
will be treated as a filing under 35 U.S.C. 111(a). Such submissions 
should be marked ``Box PCT.''

[65 FR 57060, Sept. 20, 2000]

Sec. 1.419  Display of currently valid control number under the 
          Paperwork Reduction Act.

    (a) Pursuant to the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 
et seq.), the collection of information in this subpart has been 
reviewed and approved by the Office of Management and Budget under 
control number 0651-0021.
    (b) Notwithstanding any other provision of law, no person is 
required to respond to nor shall a person be subject to a penalty for 
failure to comply with a collection of information subject to the 
requirements of the Paperwork Reduction Act unless that collection of 
information displays a currently valid Office of Management and Budget 
control number. This section constitutes the display required by 44 
U.S.C. 3512(a) and 5 CFR 1320.5(b)(2)(i) for the collection of 
information under Office of Management and Budget control number 0651-
0021 (see 5 CFR 1320.5(b)(2)(ii)(D)).

[63 FR 29617, June 1, 1998]

                Who May File an International Application

Sec. 1.421  Applicant for international application.

    (a) Only residents or nationals of the United States of America may 
file international applications in the United States Receiving Office. 
If an international application does not include an applicant who is 
indicated as being a resident or national of the United States of 
America, and at least one applicant:
    (1) Has indicated a residence or nationality in a PCT Contracting 
State, or
    (2) Has no residence or nationality indicated; applicant will be so 
notified and, if the international application includes a fee amount 
equivalent to that required by Sec. 1.445(a)(5), the international 
application will be forwarded for processing to the International Bureau 
acting as a Receiving Office. (See also Sec. 1.412(c)(6).)
    (b) Although the United States Receiving Office will accept 
international applications filed by any resident or national of the 
United States of America for international processing, an international 
application designating the United States of America will be accepted by 
the Patent and Trademark Office for the national stage only if filed by 
the inventor or as provided in Sec. 1.422, 1.423 or Sec. 1.425.
    (c) International applications which do not designate the United 
States of America may be filed by the assignee or owner.
    (d) The attorney or agent of the applicant may sign the 
international application Request and file the international application 
for the applicant if the international application when filed is 
accompanied by a separate power of attorney to that attorney or agent 
from the applicant. The separate power of attorney from the applicant 
may be submitted after filing if sufficient cause is shown for not 
submitting it at the time of filing. Note that paragraph (b) of this 
section requires that the applicant be the inventor if the United States 
of America is designated.
    (e) Any indication of different applicants for the purpose of 
different Designated Offices must be shown on the Request portion of the 
international application.
    (f) Changes in the person, name, or address of the applicant of an 
international application shall be made in accordance with PCT Rule 
92bis.

[[Page 116]]

    (g) The wording of PCT Rule 92bis is as follows:

    PCT Rule 92bis--Recording of Changes in Certain Indications in the 
Request or the Demand

         92bis Recording of Changes by the International Bureau

    (a) The International Bureau shall, on the request of the applicant 
or the receiving Office, record changes in the following indications 
appearing in the request or demand:
    (i) Person name, residence, nationality or address of the applicant,
    (ii) Person, name or address of the agent, the common representative 
or the inventor.
    (b) The International Bureau shall not record the requested change 
if the request for recording is received by it after the expiration:
    (i) Of the time limit referred to in Article 22(1), where Article 
39(1) is not applicable with respect to any Contracting State;
    (ii) Of the time limit referred to in Article 39(1)(a), where 
Article 39(1) is applicable with respect to at least one Contracting 
State.

[43 FR 20466, May 11, 1978, as amended at 53 FR 47810, Nov. 28, 1988; 60 
FR 21440, May 2, 1995]

Sec. 1.422  When the inventor is dead.

    In case of the death of the inventor, the legal representative 
(executor, administrator, etc.) of the deceased inventor may file an 
international application which designates the United States of America.

Sec. 1.423  When the inventor is insane or legally incapacitated.

    In case an inventor is insane or otherwise legally incapacitated, 
the legal representative (guardian, conservator, etc.) of such inventor 
may file an international application which designates the United States 
of America.

Sec. 1.424  Joint inventors.

    Joint inventors must jointly file an international application which 
designates the United States of America; the signature of either of them 
alone, or less than the entire number will be insufficient for an 
invention invented by them jointly, except as provided in Sec. 1.425.

Sec. 1.425  Filing by other than inventor.

    Where an international application which designates the United 
States of America is filed and where one or more inventors refuse to 
sign the Request for the international application or cannot be found or 
reached after diligent effort, the Request need not be signed by such 
inventor if it is signed by another applicant. Such international 
application must be accompanied by a statement explaining to the 
satisfaction of the Commissioner the lack of the signature concerned.

[62 FR 53199, Oct. 10, 1997]

                      The International Application

Sec. 1.431  International application requirements.

    (a) An international application shall contain, as specified in the 
Treaty and the Regulations, a Request, a description, one or more 
claims, an abstract, and one or more drawings (where required). (PCT 
Art. 3(2) and section 207 of the Administrative Instructions.)
    (b) An international filing date will be accorded by the United 
States Receiving Office, at the time to receipt of the international 
application, provided that:
    (1) At least one applicant (Sec. 1.421) is a United States resident 
or national and the papers filed at the time of receipt of the 
international application so indicate (35 U.S.C. 361(a), PCT Art. 
11(1)(i)).
    (2) The international application is in the English language (35 
U.S.C. 361(c), PCT Art. 11(1)(ii)).
    (3) The international application contains at least the following 
elements (PCT Art. 11(1)(iii)):
    (i) An indication that it is intended as an international 
application (PCT Rule 4.2);
    (ii) The designation of at least one Contracting State of the 
International Patent Cooperation Union (Sec. 1.432);
    (iii) The name of the applicant, as perscribed (note Secs. 1.421-
1.424);
    (iv) A part which on the face of it appears to be a description; and
    (v) A part which on the face of it appears to be a claim.
    (c) Payment of the basic portion of the international fee (PCT Rule 
15.2) and the transmittal and search fees (Sec. 1.445) may be made in 
full at the time the international application papers required by 
paragraph (b) of this section are deposited or within one month

[[Page 117]]

thereafter. The basic, transmittal, and search fee payable is the basic, 
transmittal, and search fee in effect on the receipt date of the 
international application.
    (1) If the basic, transmittal and search fees are not paid within 
one month from the date of receipt of the international application and 
prior to the sending of a notice of deficiency, applicant will be 
notified and given one month within which to pay the deficient fees plus 
a late payment fee equal to the greater of:
    (i) Fifty percent of the amount of the deficient fees up to a 
maximum amount equal to the basic fee; or
    (ii) An amount equal to the transmittal fee (PCT Rule 16bis).
    (2) The one-month time limit set pursuant to this paragraph to pay 
deficient fees may not be extended.
    (d) If the payment needed to cover the transmittal fee, the basic 
fee, the search fee, one designation fee and the late payment fee 
pursuant to paragraph (c) of this section is not timely made in 
accordance with PCT Rule 16bis.1(e), the Receiving Office will declare 
the international application withdrawn under PCT Article 14(3)(a).

[43 FR 20466, May 11, 1978, as amended at 50 FR 9383, Mar. 7, 1985; 52 
FR 20047, May 28, 1987; 58 FR 4344, Jan. 14, 1993; 63 FR 29618, June 1, 
1998]

Sec. 1.432  Designation of States and payment of designation and 
          confirmation fees.

    (a) The designation of States including an indication that applicant 
wishes to obtain a regional patent, where applicable, shall appear in 
the Request upon filing and must be indicated as set forth in PCT Rule 
4.9 and section 115 of the Administrative Instructions. Applicant must 
specify at least one national or regional designation on filing of the 
international application for a filing date to be granted.
    (b) If the fees necessary to cover all the national and regional 
designations specified in the Request are not paid by the applicant 
within one year from the priority date or within one month from the date 
of receipt of the international application if that month expires after 
the expiration of one year from the priority date, applicant will be 
notified and given one month within which to pay the deficient 
designation fees plus a late payment fee. The late payment fee shall be 
equal to the greater of fifty percent of the amount of the deficient 
fees up to a maximum amount equal to the basic fee, or an amount equal 
to the transmittal fee (PCT Rule 16bis). The one-month time limit set in 
the notification of deficient designation fees may not be extended. 
Failure to timely pay at least one designation fee will result in the 
withdrawal of the international application.
    (1) The one designation fee must be paid:
    (i) Within one year from the priority date;
    (ii) Within one month from the date of receipt of the international 
application if that month expires after the expiration of one year from 
the priority date; or
    (iii) With the late payment fee defined in this paragraph within the 
time set in the notification of the deficient designation fees or in 
accordance with PCT Rule 16bis.1(e).
    (2) If after a notification of deficient designation fees the 
applicant makes timely payment, but the amount paid is not sufficient to 
cover the late payment fee and all designation fees, the Receiving 
Office will, after allocating payment for the basic, search, transmittal 
and late payment fees, allocate the amount paid in accordance with PCT 
Rule 16bis.1(c) and withdraw the unpaid designations. The notification 
of deficient designation fees pursuant to this paragraph may be made 
simultaneously with any notification pursuant to Sec. 1.431(c).
    (c) The amount payable for the designation fee set forth in 
paragraph (b) is:
    (1) The designation fee in effect on the filing date of the 
international application, if such fee is paid in full within one month 
from the date of receipt of the international application;
    (2) The designation fee in effect on the date such fee is paid in 
full, if such fee is paid in full later than one month from the date of 
receipt of the international application but within one year from the 
priority date;
    (3) The designation fee in effect on the date one year from the 
priority

[[Page 118]]

date, if the fee was due one year from the priority date, and such fee 
is paid in full later than one month from the date of receipt of the 
international application and later than one year from the priority 
date; or
    (4) The designation fee in effect on the international filing date, 
if the fee was due one month from the international filing date and 
after one year from the priority date, and such fee is paid in full 
later than one month from the date of receipt of the international 
application and later than one year from the priority date.
    (d) On filing the international application, in addition to 
specifying at least one national or regional designation under PCT Rule 
4.9(a), applicant may also indicate under PCT Rule 4.9(b) that all other 
designations permitted under the Treaty are made.
    (1) Indication of other designations permitted by the Treaty under 
PCT Rule 4.9(b) must be made in a statement on the Request that any 
designation made under this paragraph is subject to confirmation (PCT 
Rule 4.9(c)) not later than the expiration of 15 months from the 
priority date by:
    (i) Filing a written notice with the United States Receiving Office 
specifying the national and/or regional designations being confirmed;
    (ii) Paying the designation fee for each designation being 
confirmed; and
    (iii) Paying the confirmation fee specified in Sec. 1.445(a)(4).
    (2) Unconfirmed designations will be considered withdrawn. If the 
amount submitted is not sufficient to cover the designation fee and the 
confirmation fee for each designation being confirmed, the Receiving 
Office will allocate the amount paid in accordance with any priority of 
designations specified by applicant. If applicant does not specify any 
priority of designations, the allocation of the amount paid will be made 
in accordance with PCT Rule 16bis.1(c).

[58 FR 4344, Jan. 14, 1993, as amended at 63 FR 29618, June 1, 1998]

Sec. 1.433  Physical requirements of international application.

    (a) The international application and each of the documents that may 
be referred to in the check list of the Request (PCT Rule 3.3(a)(ii)) 
shall be filed in one copy only.
    (b) All sheets of the international application must be on A4 size 
paper (21.0 x 29.7 cm.).
    (c) Other physical requirements for international applications are 
set forth in PCT Rule 11 and sections 201-207 of the Administrative 
Instructions.

Sec. 1.434  The request.

    (a) The request shall be made on a standardized form (PCT Rules 3 
and 4). Copies of printed Request forms are available from the Patent 
and Trademark Office. Letters requesting printed forms should be marked 
``Box PCT.''
    (b) The Check List portion of the Request form should indicate each 
document accompanying the international application on filing.
    (c) All information, for example, addresses, names of States and 
dates, shall be indicated in the Request as required by PCT Rule 4 and 
Administrative Instructions 110 and 201.
    (d) International applications which designate the United States of 
America:
    (1) Shall include the name, address and signature of the inventor, 
except as provided by Secs. 1.421(d), 1.422, 1.423 and 1.425;
    (2) Shall include a reference to any copending national application 
or international application designating the United States of America, 
if the benefit of the filing date for the prior copending application is 
to be claimed; and
    (3) May include in the Request a declaration of the inventors as 
provided for in PCT Rule 4.17(iv).

[43 FR 20466, May 11, 1978, as amended at 58 FR 4345, Jan. 14, 1993; 66 
FR 16006, Mar. 22, 2001]

Sec. 1.435  The description.

    (a) The application must meet the requirements as to the content and 
form of the description set forth in PCT Rules 5, 9, 10, and 11 and 
sections 204 and 208 of the Administrative Instructions.
    (b) In international applications designating the United States the 
description must contain upon filing an indication of the best mode 
contemplated

[[Page 119]]

by the inventor for carrying out the claimed invention.

[43 FR 20466, May 11, 1978, as amended at 63 FR 29618, June 1, 1998]

Sec. 1.436  The claims.

    The requirements as to the content and format of claims are set 
forth in PCT Art. 6 and PCT Rules 6, 9, 10 and 11 and shall be adhered 
to. The number of the claims shall be reasonable, considering the nature 
of the invention claimed.

Sec. 1.437  The drawings.

    (a) Subject to paragraph (b) of this section, when drawings are 
necessary for the understanding of the invention, or are mentioned in 
the description, they must be part of an international application as 
originally filed in the United States Receiving Office in order to 
maintain the international filing date during the national stage (PCT 
Art. 7).
    (b) Drawings missing from the application upon filing will be 
accepted if such drawings are received within 30 days of the date of 
first receipt of the incomplete papers. If the missing drawings are 
received within the 30-day period, the international filing date shall 
be the date on which such drawings are received. If such drawings are 
not timely received, all references to drawings in the international 
application shall be considered non-existent (PCT Art. 14(2), 
Administrative Instruction 310).
    (c) The physical requirements for drawings are set forth in PCT Rule 
11 and shall be adhered to.

Sec. 1.438  The abstract.

    (a) Requirements as to the content and form of the abstract are set 
forth in PCT Rule 8, and shall be adhered to.
    (b) Lack of an abstract upon filing of an international application 
will not affect the granting of a filing date. However, failure to 
furnish an abstract within one month from the date of the notification 
by the Receiving Office will result in the international appplication 
being declared withdrawn.

                                  Fees

Sec. 1.445  International application filing, processing and search 
          fees.

    (a) The following fees and charges for international applications 
are established by the Commissioner under the authority of 35 U.S.C. 
376:
    (1) A transmittal fee (see 35 U.S.C. 361(d) and PCT Rule 14)--
$240.00
    (2) A search fee (see 35 U.S.C. 361(d) and PCT Rule 16):
    (i) Where a corresponding prior United States National application 
filed under 35 U.S.C. 111(a) with the filing fee under Sec. 1.16(a) has 
been filed-- 450.00
    (ii) For all situations not provided for in paragraph (a)(2)(i) of 
this section--700.00
    (3) A supplemental search fee when required, per additional 
invention--210.00
    (4) A confirmation fee (PCT Rule 96) equal to fifty percent of the 
sum of designation fees for the national and regional designations being 
confirmed (Sec. 1.432(d)).
    (5) A fee equivalent to the transmittal fee in paragraph (a)(1) of 
this section for transmittal of an international application to the 
International Bureau for processing in its capacity as a Receiving 
Office (PCT Rule 19.4).
    (b) The basic fee and designation fee portions of the international 
fee shall be prescribed in PCT Rule 15.

(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[43 FR 20466, May 11, 1978, as amended at 52 FR 20047, May 28, 1987; 54 
FR 9432, Mar. 7, 1989; 60 FR 41023, Aug. 11, 1995; 61 FR 39588, July 30, 
1996; 63 FR 29619, June 1, 1998]

Sec. 1.446  Refund of international application filing and processing 
          fees.

    (a) Money paid for international application fees, where paid by 
actual mistake or in excess, such as a payment not required by law or 
treaty and its regulations, may be refunded. A mere change of purpose 
after the payment of a fee will not entitle a party to a refund of such 
fee. The Office will not refund amounts of twenty-five dollars or less 
unless a refund is specifically requested and will not notify the payor

[[Page 120]]

of such amounts. If the payor or party requesting a refund does not 
provide the banking information necessary for making refunds by 
electronic funds transfer, the Office may use the banking information 
provided on the payment instrument to make any refund by electronic 
funds transfer.
    (b) Any request for refund under paragraph (a) of this section must 
be filed within two years from the date the fee was paid. If the Office 
charges a deposit account by an amount other than an amount specifically 
indicated in an authorization under Sec. 1.25(b), any request for refund 
based upon such charge must be filed within two years from the date of 
the deposit account statement indicating such charge and include a copy 
of that deposit account statement. The time periods set forth in this 
paragraph are not extendable.
    (c) Refund of the supplemental search fees will be made if such 
refund is determined to be warranted by the Commissioner or the 
Commissioner's designee acting under PCT Rule 40.2(c).
    (d) The international and search fees will be refunded if no 
international filing date is accorded or if the application is withdrawn 
before transmittal of the record copy to the International Bureau (PCT 
Rules 15.6 and 16.2). The search fee will be refunded if the application 
is withdrawn before transmittal of the search copy to the International 
Searching Authority. The transmittal fee will not be refunded.
    (e) The handling fee (Sec. 1.482(b)) will be refunded (PCT Rule 
57.6) only if:
    (1) The Demand is withdrawn before the Demand has been sent by the 
International Preliminary Examining Authority to the International 
Bureau, or
    (2) The Demand is considered not to have been submitted (PCT Rule 
54.4(a)).

(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[43 FR 20466, May 11, 1978, as amended at 50 FR 9384, Mar. 7, 1985; 50 
FR 31826, Aug. 6, 1985; 58 FR 4345, Jan. 14, 1993; 65 FR 54677, Sept. 8, 
2000]

                                Priority

Sec. 1.451  The priority claim and priority document in an international 
          application.

    (a) The claim for priority must, subject to paragraph (d) of this 
section, be made on the Request (PCT Rule 4.10) in a manner complying 
with sections 110 and 115 of the Administrative Instructions.
    (b) Whenever the priority of an earlier United States national 
application or international application filed with the United States 
Receiving Office is claimed in an international application, the 
applicant may request in the Request or in a letter of transmittal 
accompanying the international application upon filing with the United 
States Receiving Office or in a separate letter filed in the United 
States Receiving Office not later than 16 months after the priority 
date, that the United States Patent and Trademark Office prepare a 
certified copy of the prior application for transmittal to the 
International Bureau (PCT Article 8 and PCT Rule 17). The fee for 
preparing a certified copy is set forth in Sec. 1.19(b)(1).
    (c) If a certified copy of the priority document is not submitted 
together with the international application on filing, or, if the 
priority application was filed in the United States and a request and 
appropriate payment for preparation of such a certified copy do not 
accompany the international application on filing or are not filed 
within 16 months of the priority date, the certified copy of the 
priority document must be furnished by the applicant to the 
International Bureau or to the United States Receiving Office within the 
time limit specified in PCT Rule 17.1(a).
    (d) The applicant may correct or add a priority claim in accordance 
with PCT Rule 26bis.1.

(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[43 FR 20466, May 11, 1978, as amended at 50 FR 9384, Mar. 7, 1985; 50 
FR 11366, Mar. 21, 1985; 54 FR 6903, Feb. 15, 1989; 58 FR 4345, Jan. 14, 
1993; 63 FR 29619, June 1, 1998; 66 FR 16006, Mar. 22, 2001]

                             Representation

Sec. 1.455  Representation in international applications.

    (a) Applicants of international applications may be represented by 
attorneys or agents registered to practice before the Patent and 
Trademark Office or by an applicant appointed as a common representative 
(PCT Art. 49,

[[Page 121]]

Rules 4.8 and 90 and Sec. 10.10). If applicants have not appointed an 
attorney or agent or one of the applicants to represent them, and there 
is more than one applicant, the applicant first named in the request and 
who is entitled to file in the U.S. Receiving Office shall be considered 
to be the common representative of all the applicants. An attorney or 
agent having the right to practice before a national office with which 
an international application is filed and for which the United States is 
an International Searching Authority or International Preliminary 
Examining Authority may be appointed to represent the applicants in the 
international application before that authority. An attorney or agent 
may appoint an associate attorney or agent who shall also then be of 
record (PCT Rule 90.1(d)). The appointment of an attorney or agent, or 
of a common representative, revokes any earlier appointment unless 
otherwise indicated (PCT Rule 90.6 (b) and (c)).
    (b) Appointment of an agent, attorney or common representative (PCT 
Rule 4.8) must be effected either in the Request form, signed by all 
applicants, or in a separate power of attorney submitted either to the 
United States Receiving Office or to the International Bureau.
    (c) Powers of attorney and revocations thereof should be submitted 
to the United States Receiving Office until the issuance of the 
international search report.
    (d) The addressee for correspondence will be as indicated in section 
108 of the Administrative Instructions.

[43 FR 20466, May 11, 1978, as amended at 50 FR 5171, Feb. 6, 1985; 58 
FR 4345, Jan. 14, 1993]

                       Transmittal of Record Copy

Sec. 1.461  Procedures for transmittal of record copy to the 
          International Bureau.

    (a) Transmittal of the record copy of the international application 
to the International Bureau shall be made by the United States Receiving 
Office or as provided by PCT Rule 19.4.
    (b) [Reserved]
    (c) No copy of an international application may be transmitted to 
the International Bureau, a foreign Designated Office, or other foreign 
authority by the United States Receiving Office or the applicant, unless 
the applicable requirements of part 5 of this chapter have been 
satisfied.

[43 FR 20466, May 11, 1978, as amended at 50 FR 9384, Mar. 7, 1985; 63 
FR 29619, June 1, 1998]

                                 Timing

Sec. 1.465  Timing of application processing based on the priority date.

    (a) For the purpose of computing time limits under the Treaty, the 
priority date shall be defined as in PCT Art. 2(xi).
    (b) When a claimed priority date is corrected or added under PCT 
Rule 26bis.1(a), or withdrawn under PCT Rule 90bis.3, or considered not 
to have been made under PCT Rule 26bis.2, the priority date for the 
purposes of computing any non-expired time limits will be the date of 
the earliest valid remaining priority claim of the international 
application, or if none, the international filing date.
    (c) When corrections under PCT Art. 11(2), Art. 14(2) or PCT Rule 
20.2(a) (i) or (iii) are timely submitted, and the date of receipt of 
such corrections falls later than one year from the claimed priority 
date or dates, the Receiving Office shall proceed under PCT Rule 
26bis.2.

[43 FR 20466, May 11, 1978, as amended at 63 FR 29619, June 1, 1998]

Sec. 1.468  Delays in meeting time limits.

    Delays in meeting time limits during international processing of 
international applications may only be excused as provided in PCT Rule 
82. For delays in meeting time limits in a national application, see 
Sec. 1.137.

                               Amendments

Sec. 1.471  Corrections and amendments during international processing.

    (a) Except as otherwise provided in this paragraph, all corrections 
submitted to the United States Receiving Office or United States 
International Searching Authority must be in English, in the form of 
replacement sheets in compliance with PCT Rules 10 and 11, and 
accompanied by a letter

[[Page 122]]

that draws attention to the differences between the replaced sheets and 
the replacement sheets. Replacement sheets are not required for the 
deletion of lines of text, the correction of simple typographical 
errors, and one addition or change of not more than five words per 
sheet. These changes may be stated in a letter and, if appropriate, the 
United States Receiving Office will make the deletion or transfer the 
correction to the international application, provided that such 
corrections do not adversely affect the clarity and direct 
reproducibility of the application (PCT Rule 26.4). Amendments that do 
not comply with PCT Rules 10 and 11.1 to 11.13 may not be entered.
    (b) Amendments of claims submitted to the International Bureau shall 
be as prescribed by PCT Rule 46.
    (c) Corrections or additions to the Request of any declarations 
under PCT Rule 4.17 should be submitted to the International Bureau as 
prescribed by PCT Rule 26ter.

[43 FR 20466, May 11, 1978, as amended at 63 FR 29619, June 1, 1998; 66 
FR 16006, Mar. 22, 2001]

Sec. 1.472  Changes in person, name, or address of applicants and 
          inventors.

    All requests for a change in person, name or address of applicants 
and inventor be sent to the United States Receiving Office until the 
time of issuance of the international search report. Thereafter requests 
for such changes should be submitted to the International Bureau.

[43 FR 20466, May 11, 1978. Redesignated at 52 FR 20047, May 28, 1987]

                           Unity of Invention

Sec. 1.475  Unity of invention before the International Searching 
          Authority, the International Preliminary Examining Authority 
          and during the national stage.

    (a) An international and a national stage application shall relate 
to one invention only or to a group of inventions so linked as to form a 
single general inventive concept (``requirement of unity of 
invention''). Where a group of inventions is claimed in an application, 
the requirement of unity of invention shall be fulfilled only when there 
is a technical relationship among those inventions involving one or more 
of the same or corresponding special technical features. The expression 
``special technical features'' shall mean those technical features that 
define a contribution which each of the claimed inventions, considered 
as a whole, makes over the prior art.
    (b) An international or a national stage application containing 
claims to different categories of invention will be considered to have 
unity of invention if the claims are drawn only to one of the following 
combinations of categories:
    (1) A product and a process specially adapted for the manufacture of 
said product; or
    (2) A product and a process of use of said product; or
    (3) A product, a process specially adapted for the manufacture of 
the said product, and a use of the said product; or
    (4) A process and an apparatus or means specifically designed for 
carrying out the said process; or
    (5) A product, a process specially adapted for the manufacture of 
the said product, and an apparatus or means specifically designed for 
carrying out the said process.
    (c) If an application contains claims to more or less than one of 
the combinations of categories of invention set forth in paragraph (b) 
of this section, unity of invention might not be present.
    (d) If multiple products, processes of manufacture or uses are 
claimed, the first invention of the category first mentioned in the 
claims of the application and the first recited invention of each of the 
other categories related thereto will be considered as the main 
invention in the claims, see PCT Article 17(3)(a) and Sec. 1.476(c).
    (e) The determination whether a group of inventions is so linked as 
to form a single general inventive concept shall be made without regard 
to whether the inventions are claimed in separate claims or as 
alternatives within a single claim.

[58 FR 4345, Jan. 14, 1993]

[[Page 123]]

Sec. 1.476  Determination of unity of invention before the International 
          Searching Authority.

    (a) Before establishing the international search report, the 
International Searching Authority will determine whether the 
international application complies with the requirement of unity of 
invention as set forth in Sec. 1.475.
    (b) If the International Searching Authority considers that the 
international application does not comply with the requirement of unity 
of invention, it shall inform the applicant accordingly and invite the 
payment of additional fees (note Sec. 1.445 and PCT Art. 17(3)(a) and 
PCT Rule 40). The applicant will be given a time period in accordance 
with PCT Rule 40.3 to pay the additional fees due.
    (c) In the case of non-compliance with unity of invention and where 
no additional fees are paid, the international search will be performed 
on the invention first mentioned (``main invention'') in the claims.
    (d) Lack of unity of invention may be directly evident before 
considering the claims in relation to any prior art, or after taking the 
prior art into consideration, as where a document discovered during the 
search shows the invention claimed in a generic or linking claim lacks 
novelty or is clearly obvious, leaving two or more claims joined thereby 
without a common inventive concept. In such a case the International 
Searching Authority may raise the objection of lack of unity of 
invention.

[43 FR 20466, May 11, 1978. Redesignated and amended at 52 FR 20048, May 
28, 1987; 58 FR 4346, Jan. 14, 1993]

Sec. 1.477  Protest to lack of unity of invention before the 
          International Searching Authority.

    (a) If the applicant disagrees with the holding of lack of unity of 
invention by the International Searching Authority, additional fees may 
be paid under protest, accompanied by a request for refund and a 
statement setting forth reasons for disagreement or why the required 
additional fees are considered excessive, or both (PCT Rule 40.2(c)).
    (b) Protest under paragraph (a) of this section will be examined by 
the Commissioner or the Commissioner's designee. In the event that the 
applicant's protest is determined to be justified, the additional fees 
or a portion thereof will be refunded.
    (c) An applicant who desires that a copy of the protest and the 
decision thereon accompany the international search report when 
forwarded to the Designated Offices, may notify the International 
Searching Authority to that effect any time prior to the issuance of the 
international search report. Thereafter, such notification should be 
directed to the International Bureau (PCT Rule 40.2(c)).

[43 FR 20466, May 11, 1978. Redesignated and amended at 52 FR 20048, May 
28, 1987]

                  International Preliminary Examination

Sec. 1.480  Demand for international preliminary examination.

    (a) On the filing of a proper Demand in an application for which the 
United States International Preliminary Examining Authority is competent 
and for which the fees have been paid, the international application 
shall be the subject of an international preliminary examination. The 
preliminary examination fee (Sec. 1.482(a)(1)) and the handling fee 
(Sec. 1.482(b)) shall be due at the time of filing the Demand.
    (b) The Demand shall be made on a standardized form. Copies of 
printed Demand forms are available from the Patent and Trademark Office. 
Letters requesting printed Demand forms should be marked ``Box PCT''.
    (c) If the Demand is made prior to the expiration of the 19th month 
from the priority date and the United States of America is elected, the 
provisions of Sec. 1.495 shall apply rather than Sec. 1.494.
    (d) Withdrawal of a proper Demand prior to the start of the 
international preliminary examination will entitle applicant to a refund 
of the preliminary examination fee minus the amount of the transmittal 
fee set forth in Sec. 1.445(a)(1).

[52 FR 20048, May 28, 1987, as amended at 53 FR 47810, Nov. 28, 1988; 58 
FR 4346, Jan. 14, 1993; 63 FR 29619, June 1, 1998]

[[Page 124]]

Sec. 1.481  Payment of international preliminary examination fees.

    (a) The handling and preliminary examination fees shall be paid 
within the time period set in PCT Rule 57.3. The handling fee or 
preliminary examination fee payable is the handling fee or preliminary 
examination fee in effect on the date of receipt of the Demand except 
under PCT Rule 59.3(a) where the fee payable is the fee in effect on the 
date of arrival of the Demand at the United States International 
Preliminary Examining Authority.
    (1) If the handling and preliminary fees are not paid within the 
time period set in PCT Rule 57.3, applicant will be notified and given 
one month within which to pay the deficient fees plus a late payment fee 
equal to the greater of:
    (i) Fifty percent of the amount of the deficient fees, but not 
exceeding an amount equal to double the handling fee; or
    (ii) An amount equal to the handling fee (PCT Rule 58bis.2).
    (2) The one-month time limit set in this paragraph to pay deficient 
fees may not be extended.
    (b) If the payment needed to cover the handling and preliminary 
examination fees, pursuant to paragraph (a) of this section, is not 
timely made in accordance with PCT Rule 58bis.1(d), the United States 
International Preliminary Examination Authority will declare the Demand 
to be considered as if it had not been submitted.

[63 FR 29619, June 1, 1998]

Sec. 1.482  International preliminary examination fees.

    (a) The following fees and charges for international preliminary 
examination are established by the Commissioner under the authority of 
35 U.S.C. 376:
    (1) A preliminary examination fee is due on filing the Demand:
    (i) Where an international search fee as set forth in 
Sec. 1.445(a)(2) has been paid on the international application to the 
United States Patent and Trademark Office as an International Searching 
Authority, a preliminary examination fee of--$490.00
    (ii) Where the International Searching Authority for the 
international application was an authority other than the United States 
Patent and Trademark Office, a preliminary examination fee of--$750.00
    (2) An additional preliminary examination fee when required, per 
additional invention:
    (i) Where the International Searching Authority for the 
international application was the United States Patent and Trademark 
Office--$140.00
    (ii) Where the International Searching Authority for the 
international application was an authority other than the United States 
Patent and Trademark Office--$270.00
    (b) The handling fee is due on filing the Demand.

(35 U.S.C. 6, 376)

[52 FR 20048, May 28, 1987, as amended at 56 FR 65154, Dec. 13, 1991; 57 
FR 38196, Aug. 21, 1992; 58 FR 4346, Jan. 14, 1993; 60 FR 41023, Aug. 
11, 1995; 61 FR 39588, July 30, 1996; 62 FR 40453, July 29, 1997]

Sec. 1.484  Conduct of international preliminary examination.

    (a) An international preliminary examination will be conducted to 
formulate a non-binding opinion as to whether the claimed invention has 
novelty, involves an inventive step (is non-obvious) and is industrially 
applicable.
    (b) International preliminary examination will begin promptly upon 
receipt of a proper Demand in an application for which the United States 
International Preliminary Examining Authority is competent, for which 
the fees for international preliminary examination (Sec. 1.482) have 
been paid, and which requests examination based on the application as 
filed or as amended by an amendment which has been received by the 
United States International Preliminary Examining Authority. Where a 
Demand requests examination based on a PCT Article 19 amendment which 
has not been received, examination may begin at 20 months without 
receipt of the PCT Article 19 amendment. Where a Demand requests 
examination based on a PCT Article 34 amendment which has not been 
received, applicant will be notified and given a time period within 
which to submit the amendment.
    (1) Examination will begin after the earliest of:

[[Page 125]]

    (i) Receipt of the amendment;
    (ii) Receipt of applicant's statement that no amendment will be 
made; or
    (iii) Expiration of the time period set in the notification.
    (2) No international preliminary examination report will be 
established prior to issuance of an international search report.
    (c) No international preliminary examination will be conducted on 
inventions not previously searched by an International Searching 
Authority.
    (d) The International Preliminary Examining Authority will establish 
a written opinion if any defect exists or if the claimed invention lacks 
novelty, inventive step or industrial applicability and will set a non-
extendable time limit in the written opinion for the applicant to reply.
    (e) If no written opinion under paragraph (d) of this section is 
necessary, or after any written opinion and the reply thereto or the 
expiration of the time limit for reply to such written opinion, an 
international preliminary examination report will be established by the 
International Preliminary Examining Authority. One copy will be 
submitted to the International Bureau and one copy will be submitted to 
the applicant.
    (f) An applicant will be permitted a personal or telephone interview 
with the examiner, which must be conducted during the non-extendable 
time limit for reply by the applicant to a written opinion. Additional 
interviews may be conducted where the examiner determines that such 
additional interviews may be helpful to advancing the international 
preliminary examination procedure. A summary of any such personal or 
telephone interview must be filed by the applicant as a part of the 
reply to the written opinion or, if applicant files no reply, be made of 
record in the file by the examiner.
    (g) If the application whose priority is claimed in the 
international application is in a language other than English, the 
United States International Preliminary Examining Authority may, where 
the validity of the priority claim is relevant for the formulation of 
the opinion referred to in Article 33(1), invite the applicant to 
furnish an English translation of the priority document within two 
months from the date of the invitation. If the translation is not 
furnished within that time limit, the international preliminary 
examination report may be established as if the priority had not been 
claimed.

[52 FR 20049, May 28, 1987, as amended at 58 FR 4346, Jan. 14, 1993; 62 
FR 53199, Oct. 10, 1997; 63 FR 29619, June 1, 1998; 66 FR 16006, Mar. 
22, 2001]

Sec. 1.485  Amendments by applicant during international preliminary 
          examination.

    (a) The applicant may make amendments at the time of filing the 
Demand. The applicant may also make amendments within the time limit set 
by the International Preliminary Examining Authority for reply to any 
notification under Sec. 1.484(b) or to any written opinion. Any such 
amendments must:
    (1) Be made by submitting a replacement sheet in compliance with PCT 
Rules 10 and 11.1 to 11.13 for every sheet of the application which 
differs from the sheet it replaces unless an entire sheet is cancelled; 
and
    (2) Include a description of how the replacement sheet differs from 
the replaced sheet. Amendments that do not comply with PCT Rules 10 and 
11.1 to 11.13 may not be entered.
    (b) If an amendment cancels an entire sheet of the international 
application, that amendment shall be communicated in a letter.

[58 FR 4346, Jan. 14, 1993, as amended at 63 FR 29620, June 1, 1998]

Sec. 1.488  Determination of unity of invention before the International 
          Preliminary Examining Authority.

    (a) Before establishing any written opinion or the international 
preliminary examination report, the International Preliminary Examining 
Authority will determine whether the international application complies 
with the requirement of unity of invention as set forth in Sec. 1.475.
    (b) If the International Preliminary Examining Authority considers 
that the international application does not comply with the requirement 
of unity of invention, it may:

[[Page 126]]

    (1) Issue a written opinion and/or an international preliminary 
examination report, in respect of the entire international application 
and indicate that unity of invention is lacking and specify the reasons 
therefor without extending an invitation to restrict or pay additional 
fees. No international preliminary examination will be conducted on 
inventions not previously searched by an International Searching 
Authority.
    (2) Invite the applicant to restrict the claims or pay additional 
fees, pointing out the categories of invention found, within a set time 
limit which will not be extended. No international preliminary 
examination will be conducted on inventions not previously searched by 
an International Searching Authority, or
    (3) If applicant fails to restrict the claims or pay additional fees 
within the time limit set for reply, the International Preliminary 
Examining Authority will issue a written opinion and/or establish an 
international preliminary examination report on the main invention and 
shall indicate the relevant facts in the said report. In case of any 
doubt as to which invention is the main invention, the invention first 
mentioned in the claims and previously searched by an International 
Searching Authority shall be considered the main invention.
    (c) Lack of unity of invention may be directly evident before 
considering the claims in relation to any prior art, or after taking the 
prior art into consideration, as where a document discovered during the 
search shows the invention claimed in a generic or linking claim lacks 
novelty or is clearly obvious, leaving two or more claims joined thereby 
without a common inventive concept. In such a case the International 
Preliminary Examining Authority may raise the objection of lack of unity 
of invention.

[52 FR 20049, May 28, 1987, as amended at 58 FR 4346, Jan. 14, 1993; 62 
FR 53200, Oct. 10, 1997]

Sec. 1.489  Protest to lack of unity of invention before the 
          International Preliminary Examining Authority.

    (a) If the applicant disagrees with the holding of lack of unity of 
invention by the International Preliminary Examining Authority, 
additional fees may be paid under protest, accompanied by a request for 
refund and a statement setting forth reasons for disagreement or why the 
required additional fees are considered excessive, or both.
    (b) Protest under paragraph (a) of this section will be examined by 
the Commissioner or the Commissioner's designee. In the event that the 
applicant's protest is determined to be justified, the additional fees 
or a portion thereof will be refunded.
    (c) An applicant who desires that a copy of the protest and the 
decision thereon accompany the international preliminary examination 
report when forwarded to the Elected Offices, may notify the 
International Preliminary Examining Authority to that effect any time 
prior to the issuance of the international preliminary examination 
report. Thereafter, such notification should be directed to the 
International Bureau.

[52 FR 20050, May 28, 1987]

                             National Stage

Sec. 1.491  Entry into the national stage.

    An international application enters the national stage when the 
applicant has filed the documents and fees required by 35 U.S.C. 371(c) 
within the periods set forth in Sec. 1.494 or Sec. 1.495.

[52 FR 20050, May 28, 1987]

Sec. 1.492  National stage fees.

    The following fees and charges are established for international 
applications entering the national stage under 35 U.S.C. 371:
    (a) The basic national fee:
    (1) Where an international preliminary examination fee as set forth 
in Sec. 1.482 has been paid on the international application to the 
United States Patent and Trademark Office:

By a small entity (Sec.  1.27(a))..........................      $345.00
By other than a small entity...............................      $690.00


    (2) Where no international preliminary examination fee as set forth 
in Sec. 1.482 has been paid to the United States Patent and Trademark 
Office, but an international search fee as set forth in Sec. 1.445(a)(2) 
has been paid on the international application to the

[[Page 127]]

United States Patent and Trademark Office as an International Searching 
Authority:

By a small entity (Sec.  1.27(a))..........................      $355.00
By other than a small entity...............................      $710.00


    (3) Where no international preliminary examination fee as set forth 
in Sec. 1.482 has been paid and no international search fee as set forth 
in Sec. 1.445(a)(2) has been paid on the international application to 
the United States Patent and Trademark Office:

By a small entity (Sec.  1.27(a))..........................      $500.00
By other than a small entity...............................    $1,000.00


    (4) Where the international preliminary examination fee as set forth 
in Sec. 1.482 has been paid to the United States Patent and Trademark 
Office and the international preliminary examination report states that 
the criteria of novelty, inventive step (non-obviousness), and 
industrial applicability, as defined in PCT Article 33(1) to (4) have 
been satisfied for all the claims presented in the application entering 
the national stage (see Sec. 1.496(b)):

By a small entity (Sec.  1.27(a))..........................       $50.00
By other than a small entity...............................      $100.00


    (5) Where a search report on the international application has been 
prepared by the European Patent Office or the Japanese Patent Office:

By a small entity (Sec.  1.27(a))..........................      $430.00
By other than a small entity...............................      $860.00


    (b) In addition to the basic national fee, for filing or later 
presentation of each independent claim in excess of 3:

By a small entity (Sec.  1.27(a))..........................       $40.00
By other than a small entity...............................       $80.00


    (c) In addition to the basic national fee, for filing or later 
presentation of each claim (whether independent or dependent) in excess 
of 20 (Note that Sec. 1.75(c) indicates how multiple dependent claims 
are considered for fee calculation purposes.):

By a small entity (Sec.  1.27(a))..........................        $9.00
By other than a small entity...............................       $18.00


    (d) In addition to the basic national fee, if the application 
contains, or is amended to contain, a multiple dependent claim(s), per 
application:

By a small entity (Sec.  1.27(a))..........................      $135.00
By other than a small entity...............................      $270.00


    (e) Surcharge for filing the oath or declaration later than 20 
months from the priority date pursuant to Sec. 1.494(c) or later than 30 
months from the priority date pursuant to Sec. 1.495(c):

By a small entity (Sec.  1.27(a))..........................       $65.00
By other than a small entity...............................      $130.00


    (f) For filing an English translation of an international 
application later than 20 months after the priority date (Sec. 1.494(c)) 
or filing an English translation of the international application or of 
any annexes to the international preliminary examination report later 
than 30 months after the priority date

(Secs. 1.495 (c) and (e))--$130.00

    (g) If the additional fees required by paragraphs (b), (c), and (d) 
of this section are not paid on presentation of the claims for which the 
additional fees are due, they must be paid or the claims cancelled by 
amendment, prior to the expiration of the time period set for reply by 
the Office in any notice of fee deficiency.

[56 FR 65154, Dec. 13, 1991, as amended at 57 FR 38196, Aug. 21, 1992; 
58 FR 4346, Jan. 14, 1993; 60 FR 41023, Aug. 11, 1995; 61 FR 39588, July 
30, 1996; 62 FR 40453, July 29, 1997; 62 FR 53200, Oct. 10, 1997; 63 FR 
67580, Dec. 8, 1998; 64 FR 67777, Dec. 3, 1999; 65 FR 49195, Aug. 11, 
2000; 65 FR 78960, Dec. 18, 2000]

Sec. 1.494  Entering the national stage in the United States of America 
          as a Designated Office.

    (a) Where the United States of America has not been elected by the 
expiration of 19 months from the priority date (see Sec. 1.495), the 
applicant must fulfill the requirements of PCT Article 22 and 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. International 
applications for which those requirements are timely fulfilled will 
enter the national stage and obtain an examination as to the

[[Page 128]]

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 20 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 Sec. 1.492(a)). The 20-month time 
limit may not be extended.
    (c) If applicant complies with paragraph (b) of this section before 
expiration of 20 months from the priority date but omits:
    (1) A translation of the international application, as filed, into 
the English language, if it was originally filed in another language (35 
U.S.C. 371(c)(2)) and/or
    (2) The oath or declaration of the inventor (35 U.S.C. 371(c)(4); 
see Sec. 1.497), and a declaration of inventorship in compliance with 
Sec. 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, applicant will be so notified and given a period of 
time within which to file the translation and/or oath or declaration in 
order to prevent abandonment of the application. The payment of the 
processing fee set forth in Sec. 1.492(f) is required for acceptance of 
an English translation later than the expiration of 20 months after the 
priority date. The payment of the surcharge set forth in Sec. 1.492(e) 
is required for acceptance of the oath or declaration of the inventor 
later than the expiration of 20 months after the priority date. 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 20 months from the priority date. Amendments under PCT 
Article 19 which are not received by the expiration of 20 months from 
the priority date will be considered to be cancelled. The 20-month time 
limit may not be extended.
    (e) 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.
    (f) The documents and fees submitted under paragraphs (b) and (c) of 
this section must, except for a copy of the international publication or 
translation of the international application that is identified as 
provided in Sec. 1.417, 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).
    (g) An international application becomes abandoned as to the United 
States 20 months from the priority date if the requirements of paragraph 
(b) of this section have not been complied with within 20 months from 
the priority date where the United States has been designated but not 
elected by the expiration of 19 months from the priority date. If the 
requirements of paragraph (b) of this section are complied with within 
20 months from the priority date but any required translation of the 
international application as filed and/or the oath or declaration are 
not timely filed, an international application will become abandoned as 
to the United States upon expiration of the time period set pursuant to 
paragraph (c) of this section.

[52 FR 20050, May 28, 1987, as amended at 58 FR 4346, Jan. 14, 1993; 63 
FR 29620, June 1, 1998; 65 FR 57060, Sept. 20, 2000; 66 FR 16006, Mar. 
22, 2001; 66 FR 28054, May 22, 2001]

Sec. 1.495  Entering the national stage in the United States of America 
          as an Elected Office.

    (a) Where the United States of America has been elected by the 
expiration of 19 months from the priority date, the applicant 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

[[Page 129]]

the abandonment of the international application as to the United States 
of America. 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 30 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 Sec. 1.492(a)). The 30-month time 
limit may not be extended.
    (c) If applicant complies with paragraph (b) of this section before 
expiration of 30 months from the priority date but omits:
    (1) A translation of the international application, as filed, into 
the English language, if it was originally filed in another language (35 
U.S.C. 371(c)(2)) and/or
    (2) The oath or declaration of the inventor (35 U.S.C. 371(c)(4); 
see Sec. 1.497), and a declaration of inventorship in compliance with 
Sec. 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, applicant will be so notified and given a period of 
time within which to file the translation and/or oath or declaration in 
order to prevent abandonment of the application. The payment of the 
processing fee set forth in Sec. 1.492(f) is required for acceptance of 
an English translation later than the expiration of 30 months after the 
priority date. The payment of the surcharge set forth in Sec. 1.492(e) 
is required for acceptance of the oath or declaration of the inventor 
later than the expiration of 30 months after the priority date. 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 30 months from the priority date. Amendments under PCT 
Article 19 which are not received by the expiration of 30 months from 
the priority date will be considered to be cancelled. The 30-month time 
limit may not be extended.
    (e) A translation into English of any annexes to the international 
preliminary examination report, if the annexes were made in another 
language, must be furnished not later than the expiration of 30 months 
from the priority date. Translations of the annexes which are not 
received by the expiration of 30 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 Sec. 1.492(f). 
Annexes for which translations are not timely received will be 
considered cancelled. The 30-month time limit may not be extended.
    (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, except for a copy of the international publication or 
translation of the international application that is identified as 
provided in Sec. 1.417, 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 30 months from the priority date if the requirements of paragraph 
(b) of this section have not been complied with within 30 months from 
the priority date and the United States has been elected by the 
expiration of 19 months from the priority date. If the requirements of 
paragraph (b) of this section are complied with within 30

[[Page 130]]

months from the priority date but any required translation of the 
international application as filed and/or the oath or declaration are 
not timely filed, an international application will become abandoned as 
to the United States upon expiration of the time period set pursuant to 
paragraph (c) of this section.

[52 FR 20051, May 28, 1987, as amended at 58 FR 4347, Jan. 14, 1993; 63 
FR 29620, June 1, 1998; 65 FR 57060, Sept. 20, 2000; 66 FR 16006, Mar. 
22, 2001; 66 FR 28054, May 22, 2001]

Sec. 1.496  Examination of international applications in the national 
          stage.

    (a) International applications which have complied with the 
requirements of 35 U.S.C. 371(c) will be taken up for action based on 
the date on which such requirements were met. However, unless an express 
request for early processing has been filed under 35 U.S.C. 371(f), no 
action may be taken prior to one month after entry into the national 
stage.
    (b) A national stage application filed under 35 U.S.C. 371 may have 
paid therein the basic national fee as set forth in Sec. 1.492(a)(4) if 
it contains, or is amended to contain, at the time of entry into the 
national stage, only claims which have been indicated in an 
international preliminary examination report prepared by the United 
States Patent and Trademark Office as satisfying the criteria of PCT 
Article 33(1)-(4) as to novelty, inventive step and industrial 
applicability. Such national stage applications in which the basic 
national fee as set forth in Sec. 1.492(a)(4) has been paid may be 
amended subsequent to the date of entry into the national stage only to 
the extent necessary to eliminate objections as to form or to cancel 
rejected claims. Such national stage applications in which the basic 
national fee as set forth in Sec. 1.492(a)(4) has been paid will be 
taken up out of order.

[52 FR 20051, May 28, 1987]

Sec. 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 Secs. 1.494 or 
1.495, and a declaration in compliance with this section has not been 
previously submitted in the international application under PCT Rule 
4.17(iv) within the time limits provided for in PCT Rule 26ter.1, he or 
she must file an oath or declaration that:
    (1) Is executed in accordance with either Secs. 1.66 or 1.68;
    (2) Identifies the application to which it is directed;
    (3) Identifies each inventor and the country of citizenship of each 
inventor; and
    (4) States that the person making the oath or declaration believes 
the named inventor or inventors to be the original and first inventor or 
inventors of the subject matter which is claimed and for which a patent 
is sought.
    (b)(1) The oath or declaration must be made by all of the actual 
inventors except as provided for in Secs. 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 (Secs. 1.42, 1.43, or 
Sec. 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 Secs. 1.494(c) or 1.495(c). However, if the oath or 
declaration does not also meet the requirements of Sec. 1.63, a 
supplemental oath or declaration in compliance with Sec. 1.63 or an 
application data sheet will be required in accordance with Sec. 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 a change to the 
inventive entity has

[[Page 131]]

been effected under PCT Rule 92bis subsequent to the execution of any 
declaration which was filed under PCT Rule 4.17(iv), the oath or 
declaration must be accompanied by:
    (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 Sec. 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 Sec. 3.73(b) of this 
chapter).
    (e) The Office may require such other information as may be deemed 
appropriate under the particular circumstances surrounding the 
correction of inventorship.
    (f) A new oath or declaration in accordance with this section must 
be filed to satisfy 35 U.S.C. 371(c)(4) if the declaration was filed 
under PCT Rule 4.17(iv), and:
    (1) There was a change in the international filing date pursuant to 
PCT Rule 20.2 after the declaration was executed; or
    (2) A change in the inventive entity was effected under PCT Rule 
92bis after the declaration was executed.
    (g) If a priority claim has been corrected or added pursuant to PCT 
Rule 26bis during the international stage after the declaration of 
inventorship was executed in the international application under PCT 
Rule 4.17(iv), applicant will be required to submit either a new oath or 
declaration or an application data sheet as set forth in Sec. 1.76 
correctly identifying the application upon which priority is claimed.

[61 FR 42807, Aug. 19, 1996, as amended at 65 FR 54677, Sept. 8, 2000; 
66 FR 16006, Mar. 22, 2001; 66 FR 28054, May 22, 2001]

Sec. 1.499  Unity of invention during the national stage.

    If the examiner finds that a national stage application lacks unity 
of invention under Sec. 1.475, the examiner may in an Office action 
require the applicant in the response to that action to elect the 
invention to which the claims shall be restricted. Such requirement may 
be made before any action on the merits but may be made at any time 
before the final action at the discretion of the examiner. Review of any 
such requirement is provided under Secs. 1.143 and 1.144.

[58 FR 4347, Jan. 14, 1993]
