[Federal Register Volume 67, Number 3 (Friday, January 4, 2002)]
[Rules and Regulations]
[Pages 520-524]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 02-157]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. 011108271-1271-01]
RIN 0651-AB44
Revision of the Time Limit for National Stage Commencement in the
United States for Patent Cooperation Treaty Applications
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Final rule.
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SUMMARY: The United States Patent and Trademark Office (Office) is
revising the rules of practice relating to applications filed under the
Patent Cooperation Treaty (PCT). This rule modifies the Office's rules
of practice to comply with an amendment to the PCT. The changes in this
rule specifically involve revising the rules of practice consistent
with the change to the PCT to have a single time limit for national
stage commencement for applications filed under the PCT, regardless of
whether the applicant filed a Demand for an international preliminary
examination.
DATES: Effective Date: April 1, 2002.
Applicability Date: The changes in this final rule apply to any
international (PCT) application in which the twenty-month period from
the priority date expires on or after April 1, 2002, and in which the
applicant has not yet entered the national stage as defined in 37 CFR
1.491(b) by April 1, 2002.
FOR FURTHER INFORMATION CONTACT: Charles A. Pearson, Director, Office
of PCT Legal Administration, by telephone at (703) 306-4145, or Boris
Milef, Legal Examiner, Office of PCT Legal Administration, by telephone
at (703) 308-3659, or by mail addressed to: Box PCT--Patents,
Commissioner for Patents, Washington, D.C. 20231, or by facsimile to
(703) 308-6459, marked to the attention of Boris Milef.
SUPPLEMENTARY INFORMATION: During a September-October 2001 meeting of
the Governing Bodies of the World Intellectual Property Organization
(WIPO), the PCT Assembly adopted an amendment to the PCT Article 22.
Specifically, PCT Article 22 was amended to change its time limit for
entering the national stage of twenty months from the priority date of
the PCT application to a time limit of thirty months from the priority
date of the PCT application. See PCT Article 47 (allows the time limits
fixed in PCT Chapters I and II to be modified by a decision of the
Contracting States through the PCT Assembly, subject to certain
conditions). This amendment to PCT Article 22 takes effect on April 1,
2002.
With this amendment to PCT Article 22, the time limit under PCT
Article 22 and the time limit under PCT Article 39 will be the same:
thirty months from the priority date of the PCT application. Thus, the
PCT will provide a single time period for national stage commencement
for PCT applications, regardless of whether the applicant filed a
Demand for an international preliminary examination. Therefore,
applicants will no longer be required to file a Demand for an
international preliminary examination under PCT Article 31 (and pay the
international preliminary examination fees under 37 CFR 1.482) in order
to delay commencement of the national stage until thirty months from
the priority date. An applicant's decision whether to file a Demand
under PCT Article 31 may be based upon whether the applicant wants an
international preliminary examination report, and not upon whether the
applicant wants to delay commencement of the national stage until
thirty months from the priority date.
[[Page 521]]
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is amended as
follows:
Section 1.8: Section 1.8(a)(2)(i)(F) is amended to eliminate its
reference to Sec. 1.494 (which is removed and reserved).
Section 1.14: Section 1.14(d)(4) is amended to eliminate its
reference to Sec. 1.494 (which is removed and reserved).
Section 1.25: Section 1.25(b) is amended to eliminate its reference
to Sec. 1.494 (which is removed and reserved). Section 1.25 is also
amended to place the sentence ``[a]n authorization to charge a fee to a
deposit account will not be considered payment of the fee on the date
the authorization to charge the fee is effective as to the particular
fee to be charged unless sufficient funds are present in the account to
cover the fee'' at the end of the paragraph because that provision is
applicable to all of the charges provided for in Sec. 1.25(b).
Section 1.41: Section 1.41(a)(4) is amended to state that 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, and to indicate that the inventorship set
forth in the international application includes any change effected
under PCT Rule 92bis. Section 1.41(a)(4) is also amended to refer to
Sec. 1.497(d) and (f) for filing an oath or declaration naming an
inventive entity different from the inventive entity named in the
international application, or if a change to the inventive entity has
been effected under PCT Rule 92bis subsequent to the execution of any
declaration filed under PCT Rule 4.17(iv).
Section 1.48: Section 1.48(f)(1) is amended to change ``enter the
national stage under 35 U.S.C. 371 and Sec. 1.494 or Sec. 1.495'' to
``enter the national stage under 35 U.S.C. 371'' (Sec. 1.494 is removed
and reserved).
Section 1.103: Section 1.103(d)(1) is amended to eliminate its
reference to Sec. 1.494 (which is removed and reserved).
Section 1.417: Section 1.417 is amended to eliminate its reference
to Sec. 1.494 (which is removed and reserved).
Section 1.480: Section 1.480 is amended to remove paragraph (c) and
redesignate paragraph (d) as paragraph (c). Former Sec. 1.480(c) is now
unnecessary because the provisions of Sec. 1.495 apply regardless of
whether a Demand is made prior to the expiration of the nineteenth
month from the priority date.
Section 1.491: Section 1.491 is amended to define both commencement
of the national stage and entry into the national stage. Because these
two events (commencement of the national stage and entry into the
national stage) may not take place at the same time, the Office is
amending Sec. 1.491 to clarify when each of these two events takes
place. Section 1.491(a) incorporates the statutory language contained
in 35 U.S.C. 371(b), thus providing that ``[s]ubject to 35 U.S.C.
371(f), the national stage shall commence with the expiration of the
applicable time limit under PCT Article 22(1) or (2), or under PCT
Article 39(1)(a).'' However, in view of the amendment to PCT Article
22, the time limit under PCT Article 22(1) or (2) is now the same as
the time limit under PCT Article 39(1)(a): thirty months from the
priority date of the PCT application.
Section 1.491(b) contains the provisions of former Sec. 1.491
amended to eliminate its reference to Sec. 1.494 (which is removed and
reserved), and provides that 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 period set in Sec. 1.495.
The Office previously published a temporary rule that amends
Sec. 1.491 to define both commencement of the national stage and entry
into the national stage in the manner discussed above. See Timing of
National Stage Commencement in the United States for Patent Cooperation
Treaty Applications, 66 FR 45775 (Aug. 30, 2001), 1250 Off. Gaz. Pat.
Office 147 (Sept. 25, 2001). The Office also published a notice
proposing the above change to Sec. 1.491 for public comment. See
Requirements for Claiming the Benefit of Prior-Filed Applications Under
Eighteen-Month Publication of Patent Applications, 66 FR 46409 (Sept.
5, 2001), 1251 Off. Gaz. Pat. Office 16 (Oct. 2, 2001). The Office
received no comment on the proposed change to Sec. 1.491.
Section 1.492: Sections 1.492(e) and (f) are amended to eliminate
their reference to Sec. 1.494 (which is removed and reserved).
Section 1.494: Section 1.494 is removed and reserved. Since the
time period for commencement of the national stage in the United States
of America will not depend upon whether the applicant has filed a
Demand under PCT Article 31, it will no longer be necessary to provide
separately in Sec. 1.494 and Sec. 1.495 for the time period for filing
the documents and fees required by 35 U.S.C. 371(c) for: (1)
Applications in which a Demand under Article 31 has not been filed
within nineteen months from the priority date (Sec. 1.494); and (2)
applications in which a Demand under Article 31 has been filed within
nineteen months from the priority date (Sec. 1.495).
Section 1.495: Section 1.495 is amended to be applicable regardless
of whether the applicant has filed a Demand under Article 31 within
nineteen months from the priority date. Section 1.495 is also amended
to eliminate unassociated text in Sec. 1.495(b) and Sec. 1.495(c).
Section 1.497: Sections 1.497(a) and 1.497(c) are amended to
eliminate their reference to Sec. 1.494 (which is removed and
reserved).
Section 1.497(d) is amended to clarify that if a change to the
inventive entity has been effected under PCT Rule 92bis subsequent to
the execution of any oath or declaration that was filed in the
application under PCT Rule 4.17(iv) or Sec. 1.497, the requirements of
Sec. 1.497(d)(1) through (d)(4) apply only if the inventive entity
changed pursuant to PCT Rule 92bis is different from the inventive
entity identified in any previously filed oath or declaration
application under PCT Rule 4.17(iv) or Sec. 1.497. Section 1.497(d) is
also amended such that a new oath or declaration is not required under
Sec. 1.497(d) unless a new oath or declaration is required by
Sec. 1.497(f). Section 1.497(f) is amended to provide that a new oath
or declaration under Sec. 1.497 is not required when a change in the
inventive entity is effected under PCT Rule 92bis after the declaration
was executed unless no declaration which sets forth and is executed by
the inventive entity as so changed has been filed in the application.
Therefore, if a declaration under PCT Rule 4.17(iv) naming and executed
by a first inventive entity is followed by a change of inventive entity
under PCT Rule 92bis and a new declaration under PCT Rule 4.17(iv)
naming and executed by the new (second) inventive entity filed in the
application, the applicant must comply with the requirements of
Sec. 1.497(d) to enter the national stage but a new oath or declaration
under Sec. 1.497 is not required because the application contains a
declaration under PCT Rule 4.17(iv) setting forth the inventive entity
as changed pursuant to PCT Rule 92bis.
Classification
Administrative Procedure Act
The changes in this final rule relate solely to Office practices
and procedures for patent applications filed under the PCT.
Accordingly, this final rule involves rules of agency practice and
procedure under 5 U.S.C. 553(b)(A), and may be adopted without prior
[[Page 522]]
notice and opportunity for public comment under 5 U.S.C. 553(b) and
(c), or thirty-day advance publication under 5 U.S.C. 553(d). See
Bachow Communications Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir. 2001).
However, the Office did provide notice and an opportunity for comment
on the change to Sec. 1.491 in order to obtain the benefit of public
comment on this change.
Regulatory Flexibility Act
As prior notice and an opportunity for public comment are not
required pursuant to 5 U.S.C. 553 (or any other law), the analytical
requirements of the Regulatory Flexibility Act (5 U.S.C. 601 et seq.)
are inapplicable. As such, the regulatory flexibility analysis is not
required, and none has been provided. See 5 U.S.C. 603.
Executive Order 13132
This rulemaking does not contain policies with federalism
implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866
This rulemaking has been determined to be not significant for
purposes of Executive Order 12866 (Sept. 30, 1993).
Paperwork Reduction Act
This rulemaking involves information collection requirements that
are subject to review by the Office of Management and Budget (OMB)
under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The
collections of information involved in this rulemaking have been
reviewed and previously approved by OMB under the following control
numbers 0651-0021, 0651-0031, and 0651-0032. The Office is not
resubmitting an information collection package to OMB for its review
and approval because the changes in this rulemaking do not affect the
information collection requirements associated with the information
collections under OMB control numbers 0651-0021, 0651-0031, or 0651-
0032.
The title, description and respondent description of the
information collections are shown below with an estimate of the annual
reporting burdens. Included in the estimates are the time for reviewing
instructions, gathering and maintaining the data needed, and completing
and reviewing the collection of information.
OMB Number: 0651-0021.
Title: Patent Cooperation Treaty.
Form Numbers: PCT/RO/101, ANNEX/134/144, PTO-1382, PCT/IPEA/401,
PCT/IB/328.
Type of Review: Regular submission (approved through December of
2003).
Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Federal Agencies or Employees, Not-for-Profit
Institutions, Small Businesses or Organizations.
Estimated Number of Respondents: 331,288.
Estimated Time Per Response: Between 15 minutes and 4 hours.
Estimated Total Annual Burden Hours: 401,083.
Needs and Uses: The information collected is required by the Patent
Cooperation Treaty (PCT). The general purpose of the PCT is to simplify
the filing of patent applications on the same invention in different
countries. It provides for a centralized filing procedure and a
standardized application format.
OMB Number: 0651-0031.
Title: Patent Processing (Updating).
Form Numbers: PTO/SB/08/21-27/30-32/35-37/42/43/61/62/63/64/67/68/
91/92/ 96/97/PTO-2053/PTO-2055.
Type of Review: Regular submission (approved through October of
2002).
Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions and Federal
Government.
Estimated Number of Respondents: 2,247,389.
Estimated Time Per Response: 0.45 hours.
Estimated Total Annual Burden Hours: 1,021,941 hours.
Needs and Uses: During the processing of an application for a
patent, the applicant/agent may be required or may desire to submit
additional information to the United States Patent and Trademark Office
concerning the examination of a specific application. The specific
information required or which may be submitted includes: Information
Disclosure Statements; Terminal Disclaimers; Petitions to Revive;
Express Abandonments; Appeal Notices; Petitions for Access; Powers to
Inspect; Certificates of Mailing or Transmission; Statements under
Sec. 3.73(b); Amendments; Petitions and their Transmittal Letters; and
Deposit Account Order Forms.
OMB Number: 0651-0032.
Title: Initial Patent Application.
Form Number: PTO/SB/01-07/13PCT/17-19/29/101-110.
Type of Review: Regular submission (approved through October of
2002).
Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions and Federal
Government.
Estimated Number of Respondents: 319,350.
Estimated Time Per Response: 9.35 hours.
Estimated Total Annual Burden Hours: 2,984,360 hours.
Needs and Uses: The purpose of this information collection is to
permit the Office to determine whether an application meets the
criteria set forth in the patent statute and regulations. The standard
Fee Transmittal form, New Utility Patent Application Transmittal form,
New Design Patent Application Transmittal form, New Plant Patent
Application Transmittal form, Declaration, and Plant Patent Application
Declaration will assist applicants in complying with the requirements
of the patent statute and regulations, and will further assist the
Office in the processing and examination of the application.
Comments are invited on: (1) Whether the collection of information
is necessary for proper performance of the functions of the agency; (2)
the accuracy of the agency's estimate of the burden; (3) ways to
enhance the quality, utility, and clarity of the information to be
collected; and (4) ways to minimize the burden of the collection of
information to respondents.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this
burden, to Robert J. Spar, Director, Office of Patent Legal
Administration, United States Patent and Trademark Office, Washington,
DC 20231, or to the Office of Information and Regulatory Affairs of
OMB, New Executive Office Building, 725 17th Street, NW., Room 10235,
Washington, DC 20503, Attention: Desk Officer for the United States
Patent and Trademark Office.
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 OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
Information, Inventions and patents, Reporting and record keeping
requirements, Small Businesses.
For the reasons set forth in the preamble, 37 CFR Part 1 is amended
as follows:
[[Page 523]]
PART 1--RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
2. Section 1.8 is amended by revising paragraph (a)(2)(i)(F) to
read as follows:
Sec. 1.8 Certificate of mailing or transmission.
(a) * * *
(2) * * *
(i) * * *
(F) The filing of a copy of the international application and the
basic national fee necessary to enter the national stage, as specified
in Sec. 1.495(b).
* * * * *
3. Section 1.14 is amended by revising paragraph (d)(4) to read as
follows:
Sec. 1.14 Patent applications preserved in confidence.
* * * * *
(d) * * *
(4) A registered attorney or agent named in the papers accompanying
the application papers filed under Sec. 1.53 or the national stage
documents filed under Sec. 1.495, if an executed oath or declaration
pursuant to Sec. 1.63 or Sec. 1.497 has not been filed.
* * * * *
4. Section 1.25 is amended by revising paragraph (b) to read as
follows:
Sec. 1.25 Deposit accounts.
* * * * *
(b) Filing, issue, appeal, international-type search report,
international application processing, petition, and post-issuance fees
may be charged against these accounts if sufficient funds are on
deposit to cover such fees. A general authorization to charge all fees,
or only certain fees, set forth in Secs. 1.16 to 1.18 to a deposit
account containing sufficient funds may be filed in an individual
application, either for the entire pendency of the application or with
a particular paper filed. An authorization to charge fees under
Sec. 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 Sec. 1.492. An authorization to charge fees set forth in
Sec. 1.18 to a deposit account is subject to the provisions of
Sec. 1.311(b). An authorization to charge to a deposit account the fee
for a request for reexamination pursuant to Sec. 1.510 or Sec. 1.913
and any other fees required in a reexamination proceeding in a patent
may also be filed with the request for reexamination. An authorization
to charge a fee to a deposit account will not be considered payment of
the fee on the date the authorization to charge the fee is effective as
to the particular fee to be charged unless sufficient funds are present
in the account to cover the fee.
5. Section 1.41 is amended by revising paragraph (a)(4) to read as
follows:
Sec. 1.41 Applicant for patent.
(a) * * *
(4) The inventorship of an international application entering the
national stage under 35 U.S.C. 371 is that inventorship set forth in
the international application, which includes any change effected under
PCT Rule 92bis. See Sec. 1.497(d) and (f) for filing an oath or
declaration naming an inventive entity different from the inventive
entity named in the international application, or if a change to the
inventive entity has been effected under PCT Rule 92bis subsequent to
the execution of any declaration filed under PCT Rule 4.17(iv)
(Sec. 1.48(f)(1) does not apply to an international application
entering the national stage under 35 U.S.C. 371).
* * * * *
6. Section 1.48 is amended by revising paragraph (f)(1) to read as
follows:
Sec. 1.48 Correction of inventorship in a patent application, other
than a reissue application, pursuant to 35 U.S.C. 116.
* * * * *
(f)(1) Nonprovisional application--filing executed oath/declaration
corrects inventorship. If the correct inventor or inventors are not
named on filing a nonprovisional application under Sec. 1.53(b) without
an executed oath or declaration under Sec. 1.63 by any of the
inventors, the first submission of an executed oath or declaration
under Sec. 1.63 by any of the inventors during the pendency of the
application will act to correct the earlier identification of
inventorship. See Secs. 1.41(a)(4) and 1.497(d) and (f) for submission
of an executed oath or declaration to enter the national stage under 35
U.S.C. 371 naming an inventive entity different from the inventive
entity set forth in the international stage.
* * * * *
7. Section 1.103 is amended by revising paragraph (d)(1) to read as
follows:
Sec. 1.103 Suspension of action by the Office.
* * * * *
(d) * * *
(1) The application is an original utility or plant application
filed under Sec. 1.53(b) or resulting from entry of an international
application into the national stage after compliance with Sec. 1.495;
* * * * *
8. Section 1.417 is revised to read as follows:
Sec. 1.417 Submission of translation of international publication.
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. 1.495, 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.''
9. Section 1.480 is amended by removing paragraph (c) and
redesignating paragraph (d) as paragraph (c).
10. Section 1.491 is revised to read as follows:
Sec. 1.491. National stage commencement and entry.
(a) Subject to 35 U.S.C. 371(f), the national stage shall commence
with the expiration of the applicable time limit under PCT Article 22
(1) or (2), or under PCT Article 39(1)(a).
(b) 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 period set in Sec. 1.495.
11. Section 1.492 is amended by revising paragraphs (e) and (f) to
read as follows:
Sec. 1.492 National stage fees.
* * * * *
(e) Surcharge for filing the oath or declaration later than thirty
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 or of any annexes to an international preliminary
examination report later than thirty months after the priority date
(Sec. 1.495(c) and (e))..................$130.00.
* * * * *
12. Section 1.494 is removed and reserved.
Sec. 1.494 [Removed and Reserved]
13. Section 1.495 is amended by revising the section heading and by
revising paragraphs (a) through (e) and (h) to read as follows:
[[Page 524]]
Sec. 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 Sec. 1.492(a)).
(c) If applicant complies with paragraph (b) of this section before
expiration of thirty months from the priority date but omits either 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)), or the oath or declaration of the inventor (35
U.S.C. 371(c)(4) and Sec. 1.497), if 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 thirty 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 thirty
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 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 Sec. 1.492(f). Annexes for which translations are not timely
received will be considered canceled.
* * * * *
(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.
14. Section 1.497 is amended by revising the introductory text of
paragraph (a) and paragraphs (c), (d) and (f) to read as follows:
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 Sec. 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:
* * * * *
(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 Sec. 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 date
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 if a
change to the inventive entity has been effected under PCT Rule 92bis
subsequent to the execution of any oath or declaration which was filed
in the application under PCT Rule 4.17(iv) or this section and the
inventive entity thus changed is different from the inventive entity
identified in any such oath or declaration, applicant must submit:
(1) A statement from each person being added as an inventor and
from each person being deleted as an inventor that any error in
inventorship in the international application occurred without
deceptive intention on his or her part;
(2) The processing fee set forth in Sec. 1.17(i);
(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); and
(4) Any new oath or declaration required by paragraph (f) of this
section.
* * * * *
(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 and no declaration which sets
forth and is executed by the inventive entity as so changed has been
filed in the application.
* * * * *
Dated: December 27, 2001.
James E. Rogan,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 02-157 Filed 1-3-02; 8:45 am]
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