INTELLECTUAL PROPERTY RIGHTS
NATIONAL LEGISLATION - USA
Patent Laws and Regulations
Regulations: Title 37, Chapter I (Subchapter A,
Parts 1, 3, 5, 7, 10, 15, and 15a and Subchapter B); Chapter IV and Chapter V,
Code of Federal Regulations
(Continuation)
37 C.F.R. § 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 § 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 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 a and/or regional designations being confirmed;
(ii) Paying the designation fee for each designation being confirmed; and
(iii) Paying the confirmation fee specified in § 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; 63 FR 29614, 29618, June 1, 1998]
37 C.F.R. § 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.
[43 FR 20466, May 11, 1978]
37 C.F.R. § 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 shall include:
(1) The name, address and signature of the inventor, except as provided by § § 1.421(d), 1.422, 1.423 and 1.425;
(2) 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.
[43 FR 20466, May 11, 1978, as amended at 58 FR 4345, Jan. 14, 1993]
37 C.F.R. § 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 by the inventor for carrying out the claimed invention.
[43 FR 20466, May 11, 1978; 63 FR 29614, 29618, June 1, 1998]
37 C.F.R. § 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.
[43 FR 20466, May 11, 1978]
37 C.F.R. § 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.
37 C.F.R. § 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.
[43 FR 20466, May 11, 1978]
37 C.F.R. § 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 § 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 (§ 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.
[43 FR 20466, May 11, 1978, as amended at 52 FR 20047, May 28, 1987; 54 FR 6903, Feb. 15, 1989; 54 FR 9432, Mar. 7, 1989; 56 FR 65154, Dec, 13, 1991; 57 FR 38195, Aug. 21, 1992; 58 FR 4345, Jan. 14, 1993; 59 FR 43741, Aug. 25, 1994; 60 FR 21440, May 2, 1995; 60 FR 41023, Aug. 11, 1995; 61 FR 39585, 39588, July 30, 1996; 62 FR 40450, 40453, July 29, 1997; 63 FR 29614, 29618, June 1, 1998]
37 C.F.R. § 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, will be refunded.
(b) [Reserved]
(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 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 (§ 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)).
[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]
37 C.F.R. § 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 is claimed in an international application, the applicant may request 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 Receiving Office not later than 16 months after the priority date, that the Patent and Trademark Office prepare a certified copy of the national application for transmittal to the International Bureau (PCT Article 8 and PCT Rule 17). The fee for preparing a certified copy is stated in § 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.
[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 29614, 29619, June 1, 1998]
37 C.F.R. § 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, Rules 4.8 and 90 and § 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]
37 C.F.R. § 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 29614, 29619, June 1, 1998]
37 C.F.R. § 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; 63 FR 29614, 29619, June 1, 1998]
37 C.F.R. § 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 § 1.137.
[43 FR 20466, May 11, 1978]
37 C.F.R. § 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 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.
[43 FR 20466, May 11, 1978; 63 FR 29614, 29619, June 1, 1998]
37 C.F.R. § 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]
37 C.F.R. § 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 § 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]
37 C.F.R. § 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 § 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 § 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]
37 C.F.R. § 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]
37 C.F.R. § 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 (§ 1.482(a)(1)) and the handling fee (§ 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 § 1A1.495 shall apply rather than § 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 § 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 29614, 29619, June 1, 1998]
37 C.F.R. § 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 29614, 29619, June 1, 1998]
Continuation: 37 C.F.R. § 1.482 International preliminary
examination fees.