[Federal Register: June 1, 1998 (Volume 63, Number 104)]
[Rules and Regulations]
[Page 29614-29620]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr01jn98-18]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket #: 980511124-8124-01]
Revision of Patent Cooperation Treaty Application Procedure
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Interim rule with request for public comments.
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SUMMARY: The Patent and Trademark Office (Office or USPTO) is amending
its rules of practice relating to applications filed under the Patent
Cooperation Treaty (PCT) to conform the United States rules of practice
with the corresponding changes to the Regulations under the PCT which
become effective July 1, 1998. The result will be more streamlined
procedures for filing and prosecuting international applications under
the PCT.
DATES: Effective date: July 1, 1998.
Comment deadline date: To be ensured of consideration, written
comments must be received on or before July 31, 1998. No public hearing
will be held.
ADDRESSES: Address written comments to: Box Comments--Patents,
Assistant Commissioner for Patents, Washington, D.C. 20231, or by
facsimile to (703) 308-6459, marked to the attention of Richard
Lazarus. Comments submitted by facsimile should be followed by a copy
of the comments submitted by mail. The Office would also prefer that
comments submitted by mail be accompanied by a copy of the comments in
a standard word processing format on a 3 \1/4\ inch disk.
The comments will be available for public inspection in Crystal
Plaza Two, room 7A04, 2011 South Clark Place, Arlington, Virginia, and
will be available through anonymous file transfer protocol (ftp) via
the Internet (address: ftp.uspto.gov). Since comments will be made
available for public inspection, information that is not desired to be
made public, such as an address or phone number, should not be included
in the comments.
FOR FURTHER INFORMATION CONTACT: Richard Lazarus, PCT Legal Office
Supervisor, by telephone at (703) 308-6451; or by mail addressed to:
Box PCT, Assistant Commissioner for Patents, Washington, DC 20231; or
by facsimile to (703) 308-6459, marked to the attention of Richard
Lazarus.
SUPPLEMENTARY INFORMATION: During a September-October 1997 meeting of
the Governing Bodies of the World Intellectual Property Organization
(WIPO), the PCT Assembly adopted amendments to the PCT Regulations,
which will take effect on July 1, 1998. The amended PCT Regulations
were published in the Official Gazette at 1210 Off. Gaz. Pat. Office 29
(May 12, 1998). The resulting changes to PCT practice will improve
filing and processing procedures for applicants filing international
applications.
This interim rule amends the United States rules of practice to
conform them to corresponding changes made to the PCT Regulations that
will take effect on July 1, 1998. The interim rules will also be
effective on July 1, 1998. The Office will publish a final rule either
confirming the adoption of these interim rules as final rules or
adopting final rules which reflect changes made based upon the public
comments received in response to this interim rule.
Applicants are hereby notified that PCT Rules 20.4(c) and
26.3ter(a) and (c) as amended are not compatible with the national law
of the United States, and thus the USPTO has taken a reservation on
adherence to these Rules through its notification to the Director
General of WIPO to such effect. See PCT Rules 20.4(d) and 26.3ter(b)
and (d). Applicants of international applications in the United States
need to be aware of these differences to avoid the consequences of
failing to comply with the requirements of United States law. For
example, PCT Rules 20.4(c) and 26.3ter(a) and (c) permit an
international filing date to be accorded notwithstanding that portions
of the international application are in a language not acceptable to
the Receiving Office. 35 U.S.C. 361 does not permit this practice and a
filing date will not be accorded by the USPTO under these provisions or
circumstances. However, if any portion of the international application
is not in English, but is in a language of filing accepted by the
International Bureau, it will be forwarded to the International Bureau
pursuant to the provisions of PCT Rule 19.4. The International Bureau
will act as a Receiving Office and accord a receipt date as of the
receipt date in the USPTO.
Similarly, the USPTO continues not to adhere to the unchanged
provisions of PCT Rule 49.5(cbis) and (k) with respect to the
translation requirements for United States national stage applications
(35 U.S.C. 371(c)(2)). See PCT Rule 49.5(l).
The above noted changes to the PCT Regulations include the addition
of new PCT Rules 89bis and 89ter (directed to electronic filing and
processing of international applications) which will enter into force
at the same time as the modifications to the Administrative
Instructions implementing those PCT Rules. Implementation of PCT Rules
89bis and 89ter is optional with each national office. In the event
that the USPTO decides to implement PCT Rules 89bis and 89ter, the
USPTO will provide notice to that effect in the Federal Register and
Official Gazette.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is amended as
follows:
Section 1.14(g) is added to comply with the amendments to PCT Rule
94. After international publication and establishment of the
international preliminary examination report, third parties are
permitted access to
[[Page 29615]]
documents from the file of the International Preliminary Examining
Authority in the USPTO's elected office file (not the international
preliminary examination file) to the same extent as access to United
States national applications.
Section 1.412(c)(6) is amended to conform to the changes to PCT
Rule 19.4(a). The change relates to the procedures for the filing of
international applications and their processing by the Receiving
Office. The change broadens the circumstances in which an international
application may be transmitted to the International Bureau as the
Receiving Office and adds more flexibility for applicants and the
United States Receiving Office in determining whether to forward the
international application to the International Bureau as the Receiving
Office. When the international application is filed with the USPTO and
the language in which the application is filed is not accepted by the
USPTO, or if the applicant does not have the requisite residence or
nationality, the application may be forwarded to the International
Bureau for receiving Office processing.
Section 1.416(c) is amended to reflect the addition of new PCT Rule
59.3. The change provides a safeguard in the case of a Demand filed
with the USPTO which is not competent as the International Preliminary
Examining Authority. The Office forwards the Demand and the competent
International Preliminary Examining Authority processes the Demand
based on the date of receipt in the USPTO. This section is rewritten
to: (1) redesignate current paragraphs (c)(2) through (c)(6) as
paragraphs (c)(3) through (c)(7), respectively; and (2) add
``[f]orwarding Demands in accordance with PCT Rule 59.3'' as a new
paragraph (c)(2).
Section 1.419 is added pursuant to 44 U.S.C. 3512(a) and 5 CFR
1320.5(b). As the Office cannot add the information specified in 5 CFR
1320.5(b) to the forms prescribed by the International Bureau, the
Office is adopting Sec. 1.419 to provide the information display
required by 5 CFR 1320.5(b)(2)(i). See 5 CFR 1320.5(b)(2)(ii)(D).
Section 1.419 specifically provides: (1) that the collection of
information in 37 CFR Part 1, Subpart C, has been reviewed and approved
by the Office of Management and Budget under control number 0651-0021;
(2) that Sec. 1.419 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; and (3)
a notice under 5 CFR 1320.5(b)(2)(i) that:
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.
Section 1.431 is amended to reflect corresponding changes to PCT
Rules 14, 15, 16 and 16bis. This section is amended to: (1) Provide in
paragraph (c) that the basic, transmittal, and search fee payable is
the basic, transmittal, and search fee in effect on the filing date of
the international application (see PCT Rule 14.1(c), 15.4(a), and
16.1(f)); (2) eliminate the unassociated text following former
paragraph (c)(2); (3) add ``prior to the sending of a notice of
deficiency''; and (4) add a reference to PCT Rule 16bis.1(e) in
paragraph (d). These changes will reduce mistakes in paying fees where
different fees have different times for payment. The change simplifies
the fees due to be the fee amounts (basic, transmittal and search) in
effect on the date of receipt of the international application.
Additionally, the change provides the additional benefit of delaying
the effect of the sanction until the sending of the notice of such
sanction.
Section 1.432 is amended to reflect corresponding changes to PCT
Rules 15 and 16bis. The changes relate to the time periods and amounts
due for the payment of designation and confirmation fees. Paragraph (b)
has been rewritten, for the purposes of clarity, as paragraphs (b)(1)
and (b)(2), with paragraph (b)(2) comprising the unassociated text
following former paragraph (b)(3). Additionally, former paragraph
(b)(3), now paragraph (b)(1)(iii), has been amended to include the
timeliness provision of new PCT Rule 16bis.1(e).
Section 1.432 is further amended to designate paragraph (c) as
paragraphs (d), (d)(1) and (d)(2) for better clarity.
Section 1.432 is further amended to add a new paragraph (c)
providing the amount payable for the designation fee set forth in
Sec. 1.432(b). Section 1.432(c)(1) provides that if the designation fee
is paid in full within one month from the date of receipt of the
international application, the amount payable for the designation fee
is the designation fee in effect on the filing date of the
international application. Section 1.432(c)(2) provides that if the
designation 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, the amount payable for the designation fee is the
designation fee in effect on the date such fee is paid in full. Section
1.432(c)(3) provides that if the designation 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, the amount payable for the
designation fee is the designation fee in effect on the date one year
from the priority date. Section 1.432(c)(4) provides that if the
designation 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, the amount
payable for the designation fee is the designation fee in effect on the
international filing date.
The addition of new paragraph (c) reflects the corresponding
changes to PCT Rules 15.4(b), 15.4(c) and 16bis.1.
Section 1.435 is amended to conform to the change to PCT Rule 13ter
incorporating the common computer readable form standard prescribed by
the Administrative Instructions. The amendments to Section 1.435 change
``Administrative Instruction 204'' to ``sections 204 and 208 of the
Administrative Instructions.''
Section 1.445 is amended to re-insert paragraphs (a)(4) and (a)(5)
that were inadvertently deleted. Section 1.445(a)(4) was inadvertently
omitted in Revision of Patent Fees; Final Rule Notice, 59 FR 43736
(August 25, 1994), 1165 Off. Gaz. Pat. Office 132 (August 30, 1994),
and Sec. 1.445(a)(5) was inadvertently omitted in Revision of Patent
and Trademark Fees; Final Rule Notice, 60 FR 41018 (August 11, 1995),
1177 Off. Gaz. Pat. Office 171 (August 29, 1995).
Section 1.451 is amended to conform to the changes made to PCT Rule
4.10 and the addition of new PCT Rule 26bis. The changes reflect the
ability of applicants to now add or correct priority claims after the
filing of the international application. This section is amended to:
(1) add a new paragraph (d) which provides that the applicant may
correct or add a priority claim in accordance with PCT Rule 26bis.1;
and (2) add the phrase ``subject to paragraph (d)'' to paragraph (a).
Section 1.461 is amended to reflect the corresponding change to PCT
Rule 19.4 wherein an international application filed in error with the
USPTO may be forwarded to the International Bureau for processing as
Receiving Office. The new provisions expand the flexibility for
forwarding an
[[Page 29616]]
international application which is filed with, but not accepted by, the
USPTO.
Section 1.465 is amended to conform to the changes made to PCT Rule
4.10 and the addition of new PCT Rule 26bis concerning the time period
in which applicant may add or correct a priority claim. Under the new
provisions, an applicant may add or correct a priority claim until
sixteen months from the priority date, or where the priority date is
changed, sixteen months from the priority date as so changed, whichever
period expires first. All priority claim additions or changes must,
however, be submitted no later than four months from the international
filing date. Section 1.465(b) is amended to change the phrase
``cancelled under PCT Rule 4.10(d), or considered not to have been made
under PCT Rule 4.10(b)'' to ``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.'' Section 1.465(b) is further
amended to change the phrase ``computing time limits'' to ``computing
any non-expired time limits'' to be in accord with the provision of new
PCT Rules 26bis.1(c). As suggested by the latter amendment to Section
1.465(b), time limits which have already expired at the time of the
addition, correction, or withdrawal of a priority claim are not subject
to recomputation. Section 1.465(c) is amended to change the reference
to PCT ``Rule 4.10(d)'' to ``PCT Rule 26bis.2(b).''
Section 1.471 is amended to clarify the rule to conform it to
amended PCT Rule 12. Section 1.471 is amended to: (1) Indicate that it
also applies to corrections submitted to the United States
International Searching Authority; (2) explicitly require that
corrections be in English and in compliance with PCT Rules 10 and 11;
(3) provide that one ``appropriate'' addition or change of not more
than five words per sheet may be stated in a letter; and (4) provide
that amendments that do not comply with PCT Rules 10 and 11 may not be
entered. PCT Rule 12 was amended to allow the Receiving Office to
accept an international application in any language. In these
instances, a translation may be required for the International
Searching Authority, and any corrections are required to be submitted
in both the language of the application and the language of the
translation. 35 U.S.C. 361(c) reflects that the United States Receiving
Office only accepts international applications in English and, in
accordance with the agreement between the United States and the
International Bureau, the United States International Searching and
Examining Authorities will only process international applications in
English. Thus, any changes under Sec. 1.471 must be in English. Section
1.471 is also clarified to reflect that PCT Rules 10 and 11 apply to
any later submitted documents.
Section 1.480 is amended to clarify the rule to conform it to
amended PCT Rule 59.3. Section 1.480 is amended to change ``Demand and
payment of the fees for international preliminary examination
(Sec. 1.482)'' to ``proper Demand in an application for which the
United States International Preliminary Examining Authority is
competent and for which the fees for international preliminary
examination (Sec. 1.482) have been paid.'' PCT Rule 59.3 was amended to
allow a non-competent authority to forward a Demand either to the
International Bureau or the competent international preliminary
examining authority.
Section 1.480 is changed to clarify that the United States
International Preliminary Examining Authority only conducts
international preliminary examinations in international applications
where the United States is the competent International Preliminary
Examining Authority.
Section 1.481(a) is added to reflect the corresponding changes to
PCT Rules 57 and 58, as well as the addition of PCT Rule 58bis. PCT
Rule 57.3 sets the time limit for paying and the amount of the handling
fee, and PCT Rule 58.1(b) provides that the provisions of PCT Rule 57.3
apply to the time limit for paying and the amount of the preliminary
examination fee. Section 1.481(a) provides that the handling and
preliminary examination fees shall be paid within the time period set
in PCT Rule 57.3, and that 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 in the United States
International Preliminary Examining Authority. PCT Rule 58bis.1(c) was
added to consider the handling fee and examination fee to have been
received before the expiration of the time period set in PCT Rule 57.3
if the fees were submitted prior to the sending of an invitation to pay
the fees. PCT Rule 58bis.1(a) was added to now allow the International
Preliminary Examining Authority to collect a late payment fee, if the
fees for preliminary examination are not paid prior to the sending of
the invitation. PCT Rule 58bis.2 sets the amount of the late payment
fee. Section 1.481(a) reflects changes to PCT Rule 58bis by providing
that if the handling and preliminary fees are not paid within the time
period set in PCT Rule 57.3, applicants will be notified and given one
month within which to pay the deficient fees plus a late payment fee
equal to the greater of: (1) fifty percent of the amount of the
deficient fees, but not exceeding an amount equal to double the
handling fee, or (2) an amount equal to the handling fee (PCT Rule
58bis.2). Section 1.481 also provides that the one-month time limit set
in Sec. 1.481(a) to pay deficient fees may not be extended.
Section 1.481(b) is added to reflect the addition of PCT Rule
58bis.1(d). Section 1.481(b) provides that if the payment needed to
cover the handling and preliminary examination fees, pursuant to
Sec. 1.481(a), is not timely made in accordance with added 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. In this regard, where the Authority sends a
notification that the Demand is considered not to have been made and
applicant's payment is received, both on that same date, the fee is
considered to be late and the notification remains effective. The fee
must antedate the notice in order for the notice not to be effective.
Section 1.484(b) is amended to clarify the rule in conformance with
amended PCT Rule 59.3. Section 1.484(b) is amended to: (1) Change
``Demand'' to ``proper Demand in an application for which the United
States International Preliminary Examining Authority is competent and
for which the fees for international preliminary examination
(Sec. 1.482) have been paid and''; and (2) eliminate the unassociated
text following former paragraph (b)(3). PCT Rule 59.3 was amended to
allow a non-competent receiving Office or international authority to
forward a Demand either to the International Bureau or the competent
International Preliminary Examining Authority. This change has the
consequence of providing a safeguard for applicants who are filing a
Demand at the end of nineteen months from the priority date and through
error deposit the Demand with a receiving Office or an international
authority that is not competent. Section 1.484(b) is changed to reflect
that the United States International Preliminary Examining Authority
only conducts international preliminary examination where the United
States is the competent International Preliminary Examining Authority.
Section 1.485(a) is amended by adding that the replacement sheets
must be ``in compliance with PCT Rules 10 and 11.'' The amendment
incorporates
[[Page 29617]]
the change to PCT Rule 11.14 which makes the formal requirements of PCT
Rules 10 and 11 applicable to amendments during the international
preliminary examination phase.
Sections 1.494(c) and 1.495(c) are amended to provide that a
``Sequence Listing'' need not be translated if the ``Sequence Listing''
complies with PCT Rule 12.1 and the description complies with PCT Rule
5.2(b).
Review Under the Paperwork Reduction Act of 1995
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 (PRA) unless that collection of information
displays a currently valid OMB control number.
This rule contains collections of information requirements subject
to the PRA. The principal impact of this interim rule is to conform the
United States rules of practice relating to applications filed under
the PCT to the corresponding amendments made to the Regulations under
the PCT.
The public reporting burden for these collections of information
have been approved by the Office of Management and Budget (OMB) under
OMB control number 0651-0021. The public reporting burden for this
collection of information is estimated to average .954 hours per
response, including the time for reviewing instructions, searching
existing data sources, gathering and maintaining the information. Send
comments regarding this burden estimate or any other aspect of the data
requirements, including suggestions for reducing this burden, to
Richard Lazarus at the address specified above or to the Office of
Information and Regulatory Affairs of OMB, New Executive Office Bldg.,
725 17th St. NW, rm. 10235, Washington, DC 20230, Attn: Desk Officer
for the Patent and Trademark Office.
Other Considerations
The United States rules of practice contained in title 37, CFR,
must conform to the PCT Articles and the Regulations annexed to the
PCT. See PCT Article 27(1). This interim rule implements corresponding
changes required to conform United States rules for international
applications to the amendments to the PCT Regulations which become
effective on July 1, 1998. Thus, this interim rule is covered by the
foreign affairs function exception of 5 U.S.C. 553(a)(1), and may be
adopted without prior notice and opportunity for public comment. See
International Brotherhood of Teamsters v. Pena, 17 F.3d 1478, 1486
(D.C. Cir. 1994).
In addition, the Commissioner of Patents and Trademarks, pursuant
to authority at 5 U.S.C. 553(b)(B), finds good cause to adopt the
changes made in this interim rule without prior notice and an
opportunity for public comment, as such procedures are timing-wise
infeasible. The PCT Regulations take effect on July 1, 1998. Delay in
the promulgation of these interim rules to provide notice and public
comment procedures would effectively preclude the required adoption in
the United States of the PCT Regulations by their effective date of
July 1, 1998. See Petry v. Block, 737 F.2d 1193, 1200-02 (D.C. Cir.
1984).
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.
This interim rule does not contain policies with federalism
implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 12612 (October 26, 1987).
This interim rule has been determined not to be significant for
purposes of Executive Order 12866 (September 30, 1993).
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
For the reasons set forth in the preamble, 37 CFR part 1 is amended
as follows:
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. 6, unless otherwise noted.
2. Section 1.14 is amended by adding paragraph (g) to read as
follows:
Sec. 1.14 Patent applications preserved in confidence.
* * * * *
(g) Copies of an application file for which the United States acted
as the International Preliminary Examining Authority, or copies of a
document in such an application file, will be furnished in accordance
with Patent Cooperation Treaty (PCT) Rule 94.2 or 94.3, upon payment of
the appropriate fee (Sec. 1.19(b)(2) or Sec. 1.19(b)(3)).
3. Section 1.412 is amending by revised paragraph (c)(6) to read as
follows:
Sec. 1.412 The United States Receiving Office.
* * * * *
(c) * * *
(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).
4. Section 1.416 is amended by revising paragraph (c) to read as
follows:
Sec. 1.416 The United States International Preliminary Examining
Authority.
* * * * *
(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
(7) Transmitting the international preliminary examination report
to applicant and the International Bureau.
5. A new Sec. 1.419 is added before the undesignated center heading
``Who May File an International Application'' to read as follows:
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
[[Page 29618]]
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)).
6. Section 1.431 is amended by revising paragraphs (c) and (d) to
read as follows:
Sec. 1.431 International application requirements.
* * * * *
(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
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).
7. Section 1.432 is amended by revising its heading, paragraphs (b)
and (c) and adding paragraph (d) to read as follows:
Sec. 1.432 Designation of States and payment of designation and
confirmation fees.
* * * * *
(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 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).
8. Section 1.435 is amended by revising paragraph (a) to read as
follows:
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.
* * * * *
9. Section 1.445 is amended by revising paragraph (a) to read as
follows:
[[Page 29619]]
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).
* * * * *
10. Section 1.451 is amended by revising paragraph (a) and adding a
paragraph (d) to read as follows:
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.
* * * * *
(d) The applicant may correct or add a priority claim in accordance
with PCT Rule 26bis.1.
11. Section 1.461 is amended by revising paragraph (a) to read as
follows:
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.
* * * * *
12. Section 1.465 is amended by revising paragraphs (b) and (c) to
read as follows:
Sec. 1.465 Timing of application processing based on the priority
date.
* * * * *
(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.
13. Section 1.471 is amended by revising paragraph (a) to read as
follows:
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 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.
* * * * *
14. Section 1.480 is amended by revising paragraph (a) to read as
follows:
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.
* * * * *
15. Section 1.481 is added to read as follows:
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.
16. Section 1.484 is amended by revising paragraph (b) to read as
follows:
Sec. 1.484 Conduct of international preliminary examination.
* * * * *
(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.
[[Page 29620]]
(1) Examination will begin after the earliest of:
(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.
* * * * *
17. Section 1.485 is amended by revising paragraph (a) to read as
follows:
Sec. 1.485 Amendment 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.
* * * * *
18. Section 1.494 is amended by revising paragraph (c) to read as
follows:
Sec. 1.494 Entering the national stage in the United States of America
as a Designated Office.
* * * * *
(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), 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).
* * * * *
19. Section 1.495 is amended by revising paragraph (c) to read as
follows:
Sec. 1.495 Entering the national stage in the United States of America
as an Elected Office.
* * * * *
(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), 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).
* * * * *
Dated: May 22, 1998.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and
Trademarks.
[FR Doc. 98-14195 Filed 5-29-98; 8:45 am]
BILLING CODE 3510-16-P