United States Patent and Trademark Office OG Notices: 02 October 2007
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. PTO-C-2006-0057]
RIN 0651-AC09
April 2007
Revision of Patent Cooperation Treaty Procedures
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office (USPTO or
Office) is revising the rules of practice in title 37 of the Code of
Federal Regulations (CFR) to conform them to certain amendments made to
the Regulations under the Patent Cooperation Treaty (PCT) that took
effect on April 1, 2007. These amendments result in the addition of a
mechanism to the PCT system whereby applicants may request that the
right to claim priority be restored in applications that meet certain
requirements. In addition, these amendments provide a means for
applicants to insert a missing portion of an international application
without the loss of the international filing date. These amendments
also clarify the circumstances and procedures under which the
correction of an obvious mistake may be made in an international
application. Finally, the Office is revising the search fee for
international applications.
DATES: Effective Date: The changes to 37 CFR 1.57, 1.437, and 1.465 are
effective on September 10, 2007. The changes to 37 CFR 1.17 and 1.445 and
the addition of 37 CFR 1.452, are effective on November 9, 2007.
Applicability Date: The changes to 37 CFR 1.57, 1.437, and 1.465
are applicable as of April 1, 2007, for international applications
filed on or after that date. The changes to 37 CFR 1.17 and the
addition of 37 CFR 1.452 are applicable as of November 9, 2007 for
international applications filed on or after April 1, 2007. The changes
to 37 CFR 1.445 are applicable to any international application having
a receipt date that is on or after November 9, 2007.
FOR FURTHER INFORMATION CONTACT: Richard R. Cole, Senior Legal
Examiner, Office of PCT Legal Administration (OPCTLA) directly by
telephone at (571) 272-3281, or by facsimile at (571) 273-0459.
SUPPLEMENTARY INFORMATION: During the September-October 2005 meeting of
the Governing Bodies of the World Intellectual Property Organization
(WIPO), the PCT Assembly adopted various amendments to the Regulations
under the PCT that enter into force on April 1, 2007. The amended PCT
Regulations were published in the PCT Gazette of February 23, 2006
(08/2006), in section IV, at pages 5496-5541. The purposes of these
amendments are to: (1) Bring the provisions of the PCT into closer
alignment with the provisions of the Patent Law Treaty (PLT); and (2)
clarify the circumstances and procedures under which the correction of
an obvious mistake may be made in an international application.
Alignment with the PLT: The PLT provides for: (1) Restoration of
applicant's right to claim priority under certain situations (PLT
Article 13(2)); (2) insertion of a missing portion of an application
without the loss of the filing date (PLT Article 5(6)); and (3)
substitution of the description and drawings upon filing with a
reference to a previously filed application (PLT Article 5(7)). The
present amendments to the PCT Regulations will provide similar
mechanisms for applicants using the PCT system.
With regard to restoration of applicant's right to claim priority
under certain situations (PLT Article 13(2)), PCT Rule 26bis has been
amended to provide for the restoration of the right to claim priority
in international applications which have been filed between twelve and
fourteen months after the priority date and in which the delay in
filing the international application was either in spite of due care or
unintentional. It must be noted that PCT Rule 49ter provides for
designated Offices whose national law is incompatible with the PCT
provisions concerning restoration of the right of priority to take a
reservation with respect to the effects of this provision on national
applications. The United States has taken this reservation pending
passage of legislation that would implement the PLT in the United
States. Therefore, any restoration of a right of priority by the United
States Receiving Office under this section, or by any other Receiving
Office under the provisions of PCT Rule 26bis.3, will not entitle
applicants to a right of priority in any application which has entered
the national stage under 35 U.S.C. 371, or in any application filed
under 35 U.S.C. 111(a) which claims benefit under 35 U.S.C. 120 and
365(c) to an international application in which the right of priority
has been restored. Whether or not applicant is entitled to the right of
priority continues to be governed by whether applicant has satisfied
the provisions of 35 U.S.C. 119, 120, and 365.
It must also be noted that even though restoration of such a right
will not entitle applicant to the right of priority in a subsequent
United States application, the priority date will still govern all PCT
time limits, including the thirty-month period for filing national
stage papers and fees under 37 CFR 1.495. PCT Article 2(ix), which
defines "priority date" for purposes of computing time limits,
contains no limitation that the priority claim be valid. Thus, for
example, in an international application containing an earliest
priority claim to a German application filed thirteen months prior to
the filing date of the international application, the filing date of
the German application will be used as the basis for computing time
limits under the PCT, including the thirty-month time period set forth
in 37 CFR 1.495 to submit the basic national fee (Sec. 1.492(a)) to
avoid abandonment, even though applicant would not be entitled to
priority to the German application in the United States national phase
since the German application was filed more than twelve months from the
international filing date. See 35 U.S.C. 119(a) and 365(b).
Concerning insertion of a missing portion of an application without
the loss of the filing date through the use of an incorporation by
reference statement (PLT Article 5(6)), PCT Rules 4 and 20 have been
amended to allow for the inclusion of such an incorporation by
reference statement on the PCT Request form. PLT Article 5(7) provides
for the substitution of the entire description and drawings upon filing
with a reference to a previously filed application. While this
provision could not be implemented to the extent provided in the PLT
absent amendment of the PCT Articles, the amendments to PCT Rules 4 and
20 to allow for the inclusion of an incorporation by reference
statement on the PCT Request form result in substantially the same
outcome for applicants. Applicants may rely on this statement to insert
portions of the international application (including the entire
description, claims, and/or drawings) which were missing upon the
international filing date without loss of their original filing date.
37 CFR 1.412(c)(1) already provides that the USPTO, in its capacity as
a PCT Receiving Office, will accord international filing dates in
accordance with PCT Rule 20. Therefore, no change to the rules of
practice in title 37 CFR is necessary to implement these provisions,
other than the deletion of 37 CFR 1.437(b) due to the fact that missing
drawings are no longer handled in a manner different from the
description and claims.
Similarly, no change to the rules of practice in title 37 CFR is
necessary to implement the PCT Rule changes directed to clarifying the
circumstances and procedures under which the correction of an obvious
mistake may be made in an international application (PCT Rule 91). The
U.S. Court of Appeals for the Federal Circuit has held that the
Office's interpretation of the previous version of PCT Rule 91.1 to
mean that correction of an obvious error is permitted under PCT Rule 91
only if the correction is obvious to the Office was unreasonable. See
Helfgott v. Dickinson, 209 F.3d 1328, 1336, 54 USPQ2d 1425, 1430 (Fed.
Cir. 2000). PCT Rule 91, however, has been amended to permit correction
of an obvious error only "if, and only if, it is obvious to the
competent authority that, as at the applicable date under [PCT Rule
91(f)], something else was intended than what appears in the document
concerned and that nothing else could have been intended than the
proposed rectification." See PCT Rule 91.1(c) (emphasis added).
Therefore, any reliance upon the interpretation of the previous version
of PCT Rule 91.1 in Helfgott should be carefully considered in view of
the April 2007 amendment to PCT Rule 91.1. The USPTO will continue to
implement PCT Rule 91 under the general authority granted under 35
U.S.C. 364(a), which provides that "[i]nternational applications shall
be processed by the Patent and Trademark Office when acting as a
Receiving Office, International Searching Authority, or International
Preliminary Examining Authority, in accordance with the applicable
provisions of the treaty, the Regulations, and this title."
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, part 1, is amended as
follows:
Section 1.17: Section 1.17(t) is amended to set forth the fee for
requesting restoration of the right of priority.
Section 1.57: Section 1.57(a)(2) is amended to reflect that omitted
portions of international applications, which applicant desires to be
effective in other designated States, must be submitted in accordance
with PCT Rule 20.
Section 1.437: Section 1.437(a) is amended for clarity and to
remove inaccurate language currently present in the paragraph. Section
1.437(b) is deleted to reflect the fact that missing drawings will no
longer be treated differently from missing parts of the description or
claims. Section 1.437(c) is redesignated as 1.437(b).
Section 1.445: Section 1.445(a) is amended to set a search fee that
more accurately reflects the cost of conducting a search and preparing
a Chapter I written opinion in an international application. Recent
cost analysis for the search and preparation of search and preparing
Chapter I written opinions for international applications reveals that
the average cost of this activity is over $1,800.00. Therefore, the
Office is revising 1.445(a) to provide for a search fee (and
supplemental search fee) of $1,800.00. In addition, the Office is
revising 1.445(a) to provide that this $1,800.00 search fee is
applicable, regardless of whether there is a corresponding prior
nonprovisional application under 35 U.S.C. 111(a), a corresponding
prior provisional application under 35 U.S.C. 111(b), or no
corresponding prior provisional or nonprovisional application under 35
U.S.C. 111. The Office formerly provided a reduced search fee if there
is a corresponding prior nonprovisional application under 35 U.S.C.
111(a) and such application is adequately identified in the
international application or accompanying papers at the time of filing
the international application. The backlog of applications under 35
U.S.C. 111(a) awaiting examination is such that it is no longer deemed
appropriate to provide a reduced fee or other incentive for applicants
to file an application under 35 U.S.C. 111(a) prior to or essentially
parallel with the filing of an international application.
Section 1.452: Section 1.452 is added to provide for restoration of
the right of priority in international applications (subject to the
enumerated conditions and limitations). Certain changes have been made
to this section from the previously proposed language in order to
correct or eliminate inconsistencies between the section and the
language of the PCT Regulations.
Section 1.452(a) provides that applicants may request restoration
of the right of priority if the international application was filed
within two months from the expiration of the priority period as defined
by PCT Rule 2.4 and the delay in filing the international application
was unintentional.
Section 1.452(b) provides that any request for restoration must be
filed within fourteen months from the priority date and must be
accompanied by: (1) A notice adding the priority claim, if applicable;
(2) the requisite fee; and (3) a statement that the delay in filing the
international application within the priority period was unintentional.
Section 1.452(c) provides that, in cases where applicant has
requested early publication, the requirements under 1.452(b) must
be submitted prior to completion of the technical preparations for
international publication.
Section 1.452(d) sets forth that restoration of a priority claim by
the United States Receiving Office under this section, or by any other
Receiving Office under the provisions of PCT Rule 26bis.3, will not
entitle applicants to a right of priority in any application which has
entered the national stage under 35 U.S.C. 371, or in any application
filed under 35 U.S.C. 111(a) which claims benefit under 35 U.S.C. 120
and 365(c) to an international application in which the right to
priority has been restored.
Section 1.465: Section 1.465(b) is amended for clarity and to
remove the limitation that the priority claim must be "valid" in
order to be used as the basis for computing time limits under the PCT.
Section 1.465(c) is deleted as unnecessary, as the obligation of
the United States Receiving Office to proceed under PCT Rule 26bis.2
arises under 35 U.S.C. 361. In addition, reference to Rule 20.2(a)(i)
or (iii) is no longer appropriate in view of the amendments to PCT Rule
20.
Section 1.497: Section 1.497(f)(1) is amended to reference PCT Rule
20.5(c) in that the reference to Rule 20.2 is no longer appropriate in
view of the amendments to PCT Rule 20. The change to this section was
not included in the previously proposed language, but is necessary in
order to correct inconsistencies between the section and the language
of the PCT Regulations.
The Office published a notice proposing changes to the rules of
practice to conform them to certain amendments made to the Regulations
under the Patent Cooperation Treaty (PCT) that became effective on
April 1, 2007, and to revise the search fee for international
applications. See April 2007 Revision of Patent Cooperation Treaty
Procedures, 72 FR 7583 (Feb. 16, 2007), 1316 Off. Gaz. Pat. Office 59
(Mar. 13, 2007). The Office received five comments (from intellectual
property organizations, industry, and an individual patent
practitioner) in response to this notice, and these comments are posted
on the Office's Internet Web site. The comments and the Office's
responses to the comments follow:
Comment 1: Several comments objected to setting the search fee at a
level of $1,800.00 on various grounds, including that it will have an
impact on PCT users, that it could act as a deterrent to the use of the
PCT, and that the amount is inconsistent with the fees charged in a
U.S. national application.
Response: The salient point remains that the previous fee levels
were significantly inadequate when compared with the actual costs
incurred by the USPTO. Based on recent cost analysis for the search and
preparation of the search reports and Chapter I written opinions for
international applications, the search fee amounts being adopted in
this final rule are a more accurate reflection of the average cost of
these activities. The Office maintains that applicants seeking patent
protection in foreign countries have sufficient alternatives (e.g.,
using the Paris route or selecting an ISA other than the USPTO/ISA)
that the search fee amounts being adopted in this final rule will not
have a significant impact on any patent applicant's ability to seek
patent protection in foreign countries. That patent applicants also
employ the PCT system for other purposes does not warrant maintaining
PCT search fee at amounts inadequate to recover the USPTO's actual
costs. Further, with regard to the arguments that the fee amount is
inconsistent with the fees charged in a U.S. national application, the
filing, search, and examination fees for U.S. national applications
filed under 35 U.S.C. 111(a) and 371 are not set at an amount that
recovers the actual costs of performing the search and
examination of such applications, because the USPTO also collects issue
and maintenance fees in U.S. national applications that are allowed and
issue as a patent. Since international applications under the PCT do
not themselves mature into patents, the fees paid in international
applications must more accurately reflect the costs to the Office.
Comment 2: Several comments also objected to the elimination of the
reduction in the search fee in applications where there was a prior
U.S. nonprovisional application. The commenters argued that some
benefit is obtained by the Office even if, as a result in the Office's
national application backlog, the search in the international
application is performed prior to the search in the U.S. national
application due to the fact that the results from the PCT search can
then be used in the national application.
Response: As noted in the specific discussion of 1.445 above,
the actual costs related to the international search are over $1800.00.
The Office also recognizes that, if there is not a prior nonprovisional
application, there is often a later filed national stage application
filed under 35 U.S.C. 371, and that some benefit is obtained in that
application as a result of the earlier PCT search. The amount of
$1800.00 for all international applications, regardless of whether
there was a prior nonprovisional application, therefore takes into
account both the fact that benefits are obtained when there is a prior
national application as well as the fact that there is also some
benefit obtained when there is a later filed national stage
application.
Comment 3: One comment suggested that, with respect to the fact
that the USPTO will only be deciding requests for the restoration of
priority under the unintentional standard, the Office should also
consider requests under the in spite of due care standard so as to not
preclude applicants from the ability of receiving a favorable
determination under such standard during the international stage.
Response: The International Bureau has indicated that they will
process requests for restoration of priority under both standards.
Therefore, for applicants who wish treatment under the in spite of due
care standard, and who know at the time of filing that the priority
period has expired, they have the option of filing the international
application with the International Bureau as receiving Office. For
those applicants who find out after they have filed the international
application that the priority period has expired, and who desire
treatment under the in spite of due care standard, they may request
that the application be transferred to the International Bureau as
receiving Office under PCT Rule 19.4 in accordance with paragraph 166A.
of the receiving Office Guidelines.
Rule Making Considerations
Regulatory Flexibility Act: For the reasons set forth herein, the
Deputy General Counsel for General Law of the United States Patent and
Trademark Office has certified to the Chief Counsel for Advocacy of the
Small Business Administration that the changes in this final rule will
not have a significant economic impact on a substantial number of small
entities. See 5 U.S.C. 605(b). The significant changes in this final
rule are: (1) Provisions for a restoration of a right of priority in
certain limited situations; and (2) An adjustment of the search and
supplemental search fee to more accurately reflect the cost of
conducting a search and preparing a Chapter I written opinion in an
international application.
The PCT enables United States applicants to file one application
(an international or PCT application) in a standardized format in
English in the United States Receiving Office (the United States Patent
and Trademark Office) and have that application acknowledged as a
regular national or regional filing in as many PCT Contracting States
as the applicants desire to seek patent protection. See Manual of
Patent Examining Procedure (MPEP) 1801. The primary benefit of the PCT
system is the ability to delay the expense of submitting papers and
fees to the PCT national offices. See MPEP 1801. The Office, in its
capacity as a PCT Receiving Office, received about 42,900 international
applications in fiscal year 2002, about 43,000 international
applications in fiscal year 2003, about 45,400 international
applications in fiscal year 2004, about 46,900 international
applications in fiscal year 2005, and about 52,900 international
applications in fiscal year 2006.
35 U.S.C. 376(b) provides that the Director shall prescribe the
amount of the search fee, the supplemental search fee, and such other
fees as established by the Director. Pursuant to the authority in 35
U.S.C. 376(b), this final rule adjusts the search fee in
1.445(b)(2)(iii) and the supplemental search fee in 1.445(b)(3)
from $1,000.00 to $1,800.00 (an increase of $800.00). This adjustment
to the search fee and supplemental search fee makes these fees more
accurately reflect the cost of conducting a search and preparing a
Chapter I written opinion in an international application.
The PCT does not preclude United States applicants from filing
patent applications directly in the patent offices of those countries
which are Contracting States of the PCT (with or without previously
having filed a regular national application under 35 U.S.C. 111(a) or
111(b) in the United States) and taking advantage of the priority
rights and other advantages provided under the Paris Convention and the
World Trade Organization (WTO) administered Agreement on Trade-Related
Aspects of Intellectual Property (TRIPs Agreement). See MPEP 1801. That
is, the PCT is not the exclusive mechanism for seeking patent
protection in foreign countries, but is instead simply an optional
alternative route available to United States patent applicants for
seeking patent protection in those countries that are Contracting
States of the PCT. See id.
In addition, an applicant filing an international application under
the PCT in the United States Receiving Office (the United States Patent
and Trademark Office) is not required to use the United States Patent
and Trademark Office as the International Searching Authority. The
European Patent Office (except for applications containing business
method claims) or the Korean Intellectual Property Office may be
elected as the International Searching Authority for international
applications filed in the United States Receiving Office. The
applicable search fee if the European Patent Office is elected as the
International Searching Authority European is $2,059.00 (set by the
European Patent Office), and the applicable search fee if the Korean
Intellectual Property Office is elected as the International Searching
Authority is $232.00 (set by the Korean Intellectual Property Office).
In 2003, the Government Accountability Office (GAO) released a
report containing the results of a survey of an expert panel of patent
law attorneys concerning small businesses considering foreign patent
protection with respect to the "cradle to grave" costs of foreign
patent protection. See Experts' Advice for Small Businesses Seeking
Foreign Patents, GAO-03-910 (2003). The GAO concluded that the cost of
obtaining and maintaining foreign patents to be in the range of
$160,000 to $330,000. See id. at 41. Therefore, the international
search fee increase of $800.00 is not significant in comparison to the
overall costs that a small entity must incur to obtain international
patent protection.
Pursuant to the authority in 35 U.S.C. 376(b), this final rule
eliminates the reduced search fee in 1.445(b)(2)(i) or (ii) when
there is a corresponding prior nonprovisional application under 35
U.S.C. 111(a) and thereby adjusts the search fee in the situation in
which there is a corresponding prior nonprovisional application under
35 U.S.C. 111(a) from $300.00 to $1,800.00 (an increase of $1,500.00).
An applicant, however, has the option of filing a provisional
application under 35 U.S.C. 111(b) (rather than a nonprovisional
application under 35 U.S.C. 111(a)) or not filing a prior application
before filing an international application. This adjustment to the
search fee is also to make these fees more accurately reflect the cost
of conducting a search and preparing a Chapter I written opinion in an
international application. As discussed previously, the PCT is not the
exclusive mechanism for seeking patent protection in foreign countries,
and an applicant filing an international application is not required to
use the United States Patent and Trademark Office as the International
Searching Authority.
Pursuant to the authority in 35 U.S.C. 376(b), this final rule
establishes a fee for filing a request for the restoration of the right
of priority of $1,370.00. This fee amount is identical to the fee
amount for petitions to accept an unintentionally delayed claim for
priority under 35 U.S.C. 119, 120, 121, or 365(a) (37 CFR 1.55 and
1.78). In addition, the Office anticipates that very few applicants
will file a request for the restoration of the right of priority (about
100 each year, in comparison to the over 50,000 international
applications filed in the United States Receiving Office each year).
For the reasons stated previously, the changes in this final rule
will not have a significant economic impact on a substantial number of
small entities.
Executive Order 13132: This rule making 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 rule making has been determined to be
significant for purposes of Executive Order 12866 (Sept. 30, 1993).
Paperwork Reduction Act: This notice involves information
collection requirements which 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 collection of information involved in
this notice has been reviewed and approved by OMB under OMB control
number 0651-0021. The United States Patent and Trademark Office is not
resubmitting an information collection package to OMB for its review
and approval because the changes in this notice do not affect the
information collection requirements associated with the information
collection under OMB control number 0651-0021.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this
burden, to: (1) The Office of Information and Regulatory Affairs,
Office of Management and Budget, New Executive Office Building, Room
10202, 725 17th Street, NW., Washington, DC 20503, Attention: Desk
Officer for the Patent and Trademark Office; and (2) Robert A. Clarke,
Director, Office of Patent Legal Administration, Commissioner for
Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
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 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. 2(b)(2).
. 2. Section 1.17 is amended by revising paragraph (t) to read as
follows:
1.17 Patent application and reexamination processing fees.
* * * * *
(t) For the acceptance of an unintentionally delayed claim for
priority under 35 U.S.C. 119, 120, 121, or 365(a) ( 1.55 and
1.78) or for filing a request for the restoration of the right of
priority under 1.452..........$1,370.00.
. 3. Section 1.57 is amended by revising paragraph (a)(2) to read as
follows:
1.57 Incorporation by reference.
(a) * * *
(2) Any amendment to an international application pursuant to this
paragraph shall be effective only as to the United States, and shall
have no effect on the international filing date of the application. In
addition, no request under this section to add the inadvertently
omitted portion of the specification or drawings in an international
application designating the United States will be acted upon by the
Office prior to the entry and commencement of the national stage (
1.491) or the filing of an application under 35 U.S.C. 111(a) which
claims benefit of the international application. Any omitted portion of
the international application which applicant desires to be effective
as to all designated States, subject to PCT Rule 20.8(b), must be
submitted in accordance with PCT Rule 20.
* * * * *
. 4. Section 1.437 is revised to read as follows:
1.437 The drawings.
(a) Drawings are required when they are necessary for the
understanding of the invention (PCT Art. 7).
(b) The physical requirements for drawings are set forth in PCT
Rule 11 and shall be adhered to.
. 5. Section 1.445 is amended by revising paragraphs (a)(2) and (a)(3) to
read as follows:
1.445 International application filing, processing and search fees.
(a) * * *
(2) A search fee (see 35 U.S.C. 361(d) and PCT Rule 16).......$1,800.00.
(3) A supplemental search fee when required, per additional
invention..........$1,800.00.
* * * * *
. 6. Section 1.452 is added to read as follows:
1.452 Restoration of right of priority.
(a) If the international application has an international filing
date which is later than the expiration of the priority period as
defined by PCT Rule 2.4 but within two months from the expiration of
the priority period, the right of priority in the international
application may be restored upon request if the delay in filing the
international application within the priority period was unintentional.
(b) A request to restore the right of priority in an international
application under paragraph (a) of this section must be filed not later
than two months from the expiration of the priority period and must
include:
(1) A notice under PCT Rule 26bis.1(a) adding the priority claim,
if the priority claim in respect of the earlier application is not
contained in the international application;
(2) The fee set forth in 1.17(t); and
(3) A statement that the delay in filing the international
application within the priority period was unintentional. The Director
may require additional information where there is a question whether
the delay was unintentional.
(c) If the applicant makes a request for early publication under
PCT Article 21(2)(b), any requirement under paragraph (b) of this
section filed after the technical preparations for international
publication have been completed by the International Bureau shall be
considered as not having been submitted in time.
(d) Restoration of a right of priority to a prior application by
the United States Receiving Office under this section, or by any other
Receiving Office under the provisions of PCT Rule 26bis.3, will not
entitle applicants to a right of priority in any application which has
entered the national stage under 35 U.S.C. 371, or in any application
filed under 35 U.S.C. 111(a) which claims benefit under 35 U.S.C. 120
and 365(c) to an international application in which the right to
priority has been restored.
. 7. Section 1.465 is amended by revising paragraph (b) to read as
follows:
1.465 Timing of application processing based on the priority date.
* * * * *
(b) When a claimed priority date is corrected under PCT Rule
26bis.1(a), or a priority claim is added under PCT Rule 26bis.1(a),
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 filing date of the earliest
remaining priority claim under PCT Article 8 of the international
application, or if none, the international filing date.
* * * * *
. 8. Section 1.497 is amended by revising paragraph (f)(1) to read as
follows:
1.497 Oath or declaration under 35 U.S.C. 371(c)(4).
* * * * *
(f) * * *
(1) There was a change in the international filing date pursuant to
PCT Rule 20.5(c) after the declaration was executed; or
* * * * *
August 31, 2007 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office