| PCT, International Applications |
Referenced Items (390, 391, 392, 393, 394, 395, 396, 397, 398, 399, 400, 401, 402, 403, 404, 405, 406, 407, 408, 409, 410) |
(406) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. 011108271-1271-01]
RIN 0651-AB44
Revision of the Time Limit for
National Stage Commencement in the United States for
Patent Cooperation Treaty Applications
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office
(Office) is revising the rules of practice relating to applications
filed under the Patent Cooperation Treaty (PCT). This rule modifies the
Office's rules of practice to comply with an amendment to the PCT. The
changes in this rule specifically involve revising the rules of
practice consistent with the change to the PCT to have a single time
limit for national stage commencement for applications filed under the
PCT, regardless of whether the applicant filed a Demand for an
international preliminary examination.
DATES: Effective Date: April 1, 2002.
Applicability Date: The changes in this final rule apply to
any international (PCT) application in which the twenty-month period
from the priority date expires on or after April 1, 2002, and in which
the applicant has not yet entered the national stage as defined in 37
CFR 1.491(b) by April 1, 2002.
FOR FURTHER INFORMATION CONTACT: Charles A. Pearson,
Director, Office of PCT Legal Administration, by telephone at (703)
306-4145, or Boris Milef, Legal Examiner, Office of PCT Legal
Administration, by telephone at (703) 308-3659, or by mail addressed
to: Box PCT-Patents, Commissioner for Patents, Washington, D.C. 20231,
or by facsimile to (703) 308-6459, marked to the attention of Boris
Milef.
SUPPLEMENTARY INFORMATION: During a September-October
2001 meeting of the Governing Bodies of the World Intellectual Property
Organization (WIPO), the PCT Assembly adopted an amendment to the PCT
Article 22. Specifically, PCT Article 22 was amended to change its time
limit for entering the national stage of twenty months from the
priority date of the PCT application to a time limit of thirty months
from the priority date of the PCT application. See PCT Article 47
(allows the time limits fixed in PCT Chapters I and II to be modified
by a decision of the Contracting States through the PCT Assembly,
subject to certain conditions). This amendment to PCT Article 22 takes
effect on April 1, 2002.
With this amendment to PCT Article 22, the time limit under PCT Article
22 and the time limit under PCT Article 39 will be the same: thirty
months from the priority date of the PCT application. Thus, the PCT
will provide a single time period for national stage commencement for
PCT applications, regardless of whether the applicant filed a Demand
for an international preliminary examination. Therefore, applicants
will no longer be required to file a Demand for an international
preliminary examination under PCT Article 31 (and pay the international
preliminary examination fees under 37 CFR 1.482) in order to delay
commencement of the national stage until thirty months from the
priority date. An applicant's decision whether to file a Demand under
PCT Article 31 may be based upon whether the applicant wants an
international preliminary examination report, and not upon whether the
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applicant wants to delay commencement of the national stage until
thirty months from the priority date.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is amended
as follows:
Section 1.8: Section 1.8(a)(2)(i)(F) is amended to
eliminate its reference to 1.494 (which is removed and reserved).
Section 1.14: Section 1.14(d)(4) is amended to eliminate its
reference to 1.494 (which is removed and reserved).
Section 1.25: Section 1.25(b) is amended to eliminate its
reference to 1.494 (which is removed and reserved). Section 1.25 is
also amended to place the sentence "[a]n authorization to charge a
fee to a deposit account will not be considered payment of the fee on
the date the authorization to charge the fee is effective as to the
particular fee to be charged unless sufficient funds are present in the
account to cover the fee" at the end of the paragraph because that
provision is applicable to all of the charges provided for in
1.25(b).
Section 1.41: Section 1.41(a)(4) is amended to state that
the inventorship of an international application entering the national
stage under 35 U.S.C. 371 is that inventorship set forth in the
international application, and to indicate that the inventorship set
forth in the international application includes any change effected
under PCT Rule 92bis. Section 1.41(a)(4) is also amended to refer to
1.497(d) and (f) for filing an oath or declaration naming an inventive
entity different from the inventive entity named in the international
application, or if a change to the inventive entity has been effected
under PCT Rule 92bis subsequent to the execution of any declaration
filed under PCT Rule 4.17(iv).
Section 1.48: Section 1.48(f)(1) is amended to change
"enter the national stage under 35 U.S.C. 371 and 1.494 or
1.495" to "enter the national stage under 35 U.S.C. 371" ( 1.494
is removed and reserved).
Section 1.103: Section 1.103(d)(1) is amended to eliminate
its reference to 1.494 (which is removed and reserved).
Section 1.417: Section 1.417 is amended to eliminate its
reference to 1.494 (which is removed and reserved).
Section 1.480: Section 1.480 is amended to remove paragraph
(c) and redesignate paragraph (d) as paragraph (c). Former 1.480(c)
is now unnecessary because the provisions of 1.495 apply regardless
of whether a Demand is made prior to the expiration of the nineteenth
month from the priority date.
Section 1.491: Section 1.491 is amended to define both
commencement of the national stage and entry into the national stage.
Because these two events (commencement of the national stage and entry
into the national stage) may not take place at the same time, the
Office is amending 1.491 to clarify when each of these two events
takes place. Section 1.491(a) incorporates the statutory language
contained in 35 U.S.C. 371(b), thus providing that "[s]ubject to 35
U.S.C. 371(f), the national stage shall commence with the expiration of
the applicable time limit under PCT Article 22(1) or (2), or under PCT
Article 39(1)(a)." However, in view of the amendment to PCT Article
22, the time limit under PCT Article 22(1) or (2) is now the same as
the time limit under PCT Article 39(1)(a): thirty months from the
priority date of the PCT application.
Section 1.491(b) contains the provisions of former 1.491 amended to
eliminate its reference to 1.494 (which is removed and reserved),
and provides that an international application enters the national
stage when the applicant has filed the documents and fees required by
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35 U.S.C. 371(c) within the period set in 1.495.
The Office previously published a temporary rule that amends 1.491
to define both commencement of the national stage and entry into the
national stage in the manner discussed above. See Timing of
National Stage Commencement in the United States for Patent Cooperation
Treaty Applications, 66 FR 45775 (Aug. 30, 2001), 1250 Off.
Gaz. Pat. Office 147 (Sept. 25, 2001). The Office also published a
notice proposing the above change to 1.491 for public comment.
See Requirements for Claiming the Benefit of Prior-Filed
Applications Under Eighteen-Month Publication of Patent Applications,
66 FR 46409 (Sept. 5, 2001), 1251 Off. Gaz. Pat. Office
16 (Oct. 2, 2001). The Office received no comment on the proposed
change to 1.491.
Section 1.492: Sections 1.492(e) and (f) are amended to
eliminate their reference to 1.494 (which is removed and reserved).
Section 1.494: Section 1.494 is removed and reserved. Since
the time period for commencement of the national stage in the United
States of America will not depend upon whether the applicant has filed
a Demand under PCT Article 31, it will no longer be necessary to
provide separately in 1.494 and 1.495 for the time period for
filing the documents and fees required by 35 U.S.C. 371(c) for: (1)
Applications in which a Demand under Article 31 has not been filed
within nineteen months from the priority date ( 1.494); and (2)
applications in which a Demand under Article 31 has been filed within
nineteen months from the priority date ( 1.495).
Section 1.495: Section 1.495 is amended to be applicable
regardless of whether the applicant has filed a Demand under Article 31
within nineteen months from the priority date. Section 1.495 is also
amended to eliminate unassociated text in 1.495(b) and 1.495(c).
Section 1.497: Sections 1.497(a) and 1.497(c) are amended to
eliminate their reference to 1.494 (which is removed and reserved).
Section 1.497(d) is amended to clarify that if a change to the
inventive entity has been effected under PCT Rule 92bis subsequent to
the execution of any oath or declaration that was filed in the
application under PCT Rule 4.17(iv) or 1.497, the requirements of
1.497(d)(1) through (d)(4) apply only if the inventive entity changed
pursuant to PCT Rule 92bis is different from the inventive entity
identified in any previously filed oath or declaration application
under PCT Rule 4.17(iv) or 1.497. Section 1.497(d) is also amended
such that a new oath or declaration is not required under 1.497(d)
unless a new oath or declaration is required by 1.497(f). Section
1.497(f) is amended to provide that a new oath or declaration under
1.497 is not required when a change in the inventive entity is effected
under PCT Rule 92bis after the declaration was executed unless no
declaration which sets forth and is executed by the inventive entity as
so changed has been filed in the application. Therefore, if a
declaration under PCT Rule 4.17(iv) naming and executed by a first
inventive entity is followed by a change of inventive entity under PCT
Rule 92bis and a new declaration under PCT Rule 4.17(iv) naming and
executed by the new (second) inventive entity filed in the application,
the applicant must comply with the requirements of 1.497(d) to enter
the national stage but a new oath or declaration under 1.497 is not
required because the application contains a declaration under PCT Rule
4.17(iv) setting forth the inventive entity as changed pursuant to PCT
Rule 92bis.
Classification
Administrative Procedure Act
The changes in this final rule relate solely to Office
practices and procedures for patent applications filed under the PCT.
Accordingly, this final rule involves rules of agency practice and
procedure under 5 U.S.C. 553(b)(A), and may be adopted without prior
notice and opportunity for public comment under 5 U.S.C. 553(b) and
(c), or thirty-day advance publication under 5 U.S.C. 553(d). See
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Bachow Communications Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir.
2001). However, the Office did provide notice and an opportunity for
comment on the change to 1.491 in order to obtain the benefit of
public comment on this change.
Regulatory Flexibility Act
As prior notice and an opportunity for public comment are not
required pursuant to 5 U.S.C. 553 (or any other law), the analytical
requirements of the Regulatory Flexibility Act (5 U.S.C. 601 et
seq.) are inapplicable. As such, the regulatory flexibility
analysis is not required, and none has been provided. See 5 U.S.C. 603.
Executive Order 13132
This rulemaking does not contain policies with federalism
implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866
This rulemaking has been determined to be not significant for
purposes of Executive Order 12866 (Sept. 30, 1993).
Paperwork Reduction Act
This rulemaking involves information collection requirements
that are subject to review by the Office of Management and Budget (OMB)
under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et
seq.). The collections of information involved in this rulemaking
have been reviewed and previously approved by OMB under the following
control numbers 0651-0021, 0651-0031, and 0651-0032. The Office is not
resubmitting an information collection package to OMB for its review
and approval because the changes in this rulemaking do not affect the
information collection requirements associated with the information
collections under OMB control numbers 0651-0021, 0651-0031, or
0651-0032.
The title, description and respondent description of the information
collections are shown below with an estimate of the annual reporting
burdens. Included in the estimates are the time for reviewing
instructions, gathering and maintaining the data needed, and completing
and reviewing the collection of information.
OMB Number: 0651-0021.
Title: Patent Cooperation Treaty.
Form Numbers: PCT/RO/101, ANNEX/134/144, PTO-1382,
PCT/IPEA/401, PCT/IB/328.
Type of Review: Regular submission (approved through
December of 2003).
Affected Public: Individuals or Households, Business or
Other For-Profit Institutions, Federal Agencies or Employees,
Not-for-Profit Institutions, Small Businesses or Organizations.
Estimated Number of Respondents: 331,288.
Estimated Time Per Response: Between 15 minutes and 4 hours.
Estimated Total Annual Burden Hours: 401,083.
Needs and Uses: The information collected is required by the
Patent Cooperation Treaty (PCT). The general purpose of the PCT is to
simplify the filing of patent applications on the same invention in
different countries. It provides for a centralized filing procedure and
a standardized application format.
OMB Number: 0651-0031.
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Title: Patent Processing (Updating).
Form Numbers: PTO/SB/08/21-27/30-32/35-37/42/43/61/62/63/64/67/68/91/92/
96/97/PTO-2053/PTO-2055.
Type of Review: Regular submission (approved through October
of 2002).
Affected Public: Individuals or Households, Business or
Other For-Profit Institutions, Not-for-Profit Institutions and Federal
Government.
Estimated Number of Respondents: 2,247,389.
Estimated Time Per Response: 0.45 hours.
Estimated Total Annual Burden Hours: 1,021,941 hours.
Needs and Uses: During the processing of an application for
a patent, the applicant/agent may be required or may desire to submit
additional information to the United States Patent and Trademark Office
concerning the examination of a specific application. The specific
information required or which may be submitted includes: Information
Disclosure Statements; Terminal Disclaimers; Petitions to Revive;
Express Abandonments; Appeal Notices; Petitions for Access; Powers to
Inspect; Certificates of Mailing or Transmission; Statements under
3.73(b); Amendments; Petitions and their Transmittal Letters; and
Deposit Account Order Forms.
OMB Number: 0651-0032.
Title: Initial Patent Application.
Form Number: PTO/SB/01-07/13PCT/17-19/29/101-110.
Type of Review: Regular submission (approved through October
of 2002).
Affected Public: Individuals or Households, Business or
Other For-Profit Institutions, Not-for-Profit Institutions and Federal
Government.
Estimated Number of Respondents: 319,350.
Estimated Time Per Response: 9.35 hours.
Estimated Total Annual Burden Hours: 2,984,360 hours.
Needs and Uses: The purpose of this information collection
is to permit the Office to determine whether an application meets the
criteria set forth in the patent statute and regulations. The standard
Fee Transmittal form, New Utility Patent Application Transmittal form,
New Design Patent Application Transmittal form, New Plant Patent
Application Transmittal form, Declaration, and Plant Patent Application
Declaration will assist applicants in complying with the requirements
of the patent statute and regulations, and will further assist the
Office in the processing and examination of the application.
Comments are invited on: (1) Whether the collection of information is
necessary for proper performance of the functions of the agency; (2)
the accuracy of the agency's estimate of the burden; (3) ways to
enhance the quality, utility, and clarity of the information to be
collected; and (4) ways to minimize the burden of the collection of
information to respondents.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this
burden, to Robert J. Spar, Director, Office of Patent Legal
Administration, United States Patent and Trademark Office, Washington,
DC 20231, or to the Office of Information and Regulatory Affairs of
OMB, New Executive Office Building, 725 17th Street, NW., Room 10235,
Washington, DC 20503, Attention: Desk Officer for the United States
Patent and Trademark Office.
Notwithstanding any other provision of law, no person is required to
respond to nor shall a person be subject to a penalty for failure to
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comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
Information, Inventions and patents, Reporting and record keeping
requirements, Small Businesses.
For the reasons set forth in the preamble, 37 CFR Part 1 is
amended as follows:
PART 1 - RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 continues to read
as follows:
Authority: 35 U.S.C. 2(b)(2).
2. Section 1.8 is amended by revising paragraph (a)(2)(i)(F) to
read as follows:
1.8 Certificate of mailing or transmission.
(a) * * *
(2) * * *
(i) * * *
(F) The filing of a copy of the international application and the basic
national fee necessary to enter the national stage, as specified in
1.495(b).
* * * * *
3. Section 1.14 is amended by revising paragraph (d)(4) to read
as follows:
1.14 Patent applications preserved in confidence.
* * * * *
(d) * * *
(4) A registered attorney or agent named in the papers accompanying the
application papers filed under 1.53 or the national stage documents
filed under 1.495, if an executed oath or declaration pursuant to
1.63 or 1.497 has not been filed.
* * * * *
4. Section 1.25 is amended by revising paragraph (b) to read as
follows:
1.25 Deposit accounts.
* * * * *
(b) Filing, issue, appeal, international-type search report,
international application processing, petition, and post-issuance fees
may be charged against these accounts if sufficient funds are on
deposit to cover such fees. A general authorization to charge all fees,
or only certain fees, set forth in 1.16 to 1.18 to a deposit
account containing sufficient funds may be filed in an individual
application, either for the entire pendency of the application or with
a particular paper filed. An authorization to charge fees under 1.16
in an international application entering the national stage under 35
U.S.C. 371 will be treated as an authorization to charge fees under
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1.492. An authorization to charge fees set forth in 1.18 to a
deposit account is subject to the provisions of 1.311(b). An
authorization to charge to a deposit account the fee for a request for
reexamination pursuant to 1.510 or 1.913 and any other fees
required in a reexamination proceeding in a patent may also be filed
with the request for reexamination. An authorization to charge a fee to
a deposit account will not be considered payment of the fee on the date
the authorization to charge the fee is effective as to the particular
fee to be charged unless sufficient funds are present in the account to
cover the fee.
5. Section 1.41 is amended by revising paragraph (a)(4) to read
as follows:
1.41 Applicant for patent.
(a) * * *
(4) The inventorship of an international application entering the
national stage under 35 U.S.C. 371 is that inventorship set forth in
the international application, which includes any change effected under
PCT Rule 92bis. See 1.497(d) and (f) for filing an oath or
declaration naming an inventive entity different from the inventive
entity named in the international application, or if a change to the
inventive entity has been effected under PCT Rule 92bis subsequent to
the execution of any declaration filed under PCT Rule 4.17(iv) (
1.48(f)(1) does not apply to an international application entering the
national stage under 35 U.S.C. 371).
* * * * *
6. Section 1.48 is amended by revising paragraph (f)(1) to read
as follows:
1.48 Correction of inventorship in a patent application, other than a
reissue application, pursuant to 35 U.S.C. 116.
* * * * *
(f)(1) Nonprovisional application - filing executed
oath/declaration corrects inventorship. If the correct inventor or
inventors are not named on filing a nonprovisional application under
1.53(b) without an executed oath or declaration under 1.63 by any of
the inventors, the first submission of an executed oath or declaration
under 1.63 by any of the inventors during the pendency of the
application will act to correct the earlier identification of
inventorship. See 1.41(a)(4) and 1.497(d) and (f) for submission
of an executed oath or declaration to enter the national stage under 35
U.S.C. 371 naming an inventive entity different from the inventive
entity set forth in the international stage.
* * * * *
7. Section 1.103 is amended by revising paragraph (d)(1) to
read as follows:
1.103 Suspension of action by the Office.
* * * * *
(d) * * *
(1) The application is an original utility or plant application filed
under 1.53(b) or resulting from entry of an international
application into the national stage after compliance with 1.495;
* * * * *
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8. Section 1.417 is revised to read as follows:
1.417 Submission of translation of international publication.
The submission of the international publication or an English
language translation of an international application pursuant to 35
U.S.C. 154(d)(4) must clearly identify the international application to
which it pertains ( 1.5(a)) and, unless it is being submitted
pursuant to 1.495, be clearly identified as a submission pursuant to
35 U.S.C. 154(d)(4). Otherwise, the submission will be treated as a
filing under 35 U.S.C. 111(a). Such submissions should be marked "Box
PCT."
9. Section 1.480 is amended by removing paragraph (c) and
redesignating paragraph (d) as paragraph (c).
10. Section 1.491 is revised to read as follows:
1.491. National stage commencement and entry.
(a) Subject to 35 U.S.C. 371(f), the national stage shall
commence with the expiration of the applicable time limit under PCT
Article 22 (1) or (2), or under PCT Article 39(1)(a).
(b) An international application enters the national stage when the
applicant has filed the documents and fees required by 35 U.S.C. 371(c)
within the period set in 1.495.
11. Section 1.492 is amended by revising paragraphs (e) and (f)
to read as follows:
1.492 National stage fees.
* * * * *
(e) Surcharge for filing the oath or declaration later than
thirty months from the priority date pursuant to 1.495(c):
By a small entity ( 1.27(a)) $65.00
By other than a small entity 130.00
(f) For filing an English translation of an international
application or of any annexes to an international preliminary
examination report later than thirty months after the priority date
( 1.495(c) and (e)) $130.00.
* * * * *
12. Section 1.494 is removed and reserved.
1.494 [Removed and Reserved]
13. Section 1.495 is amended by revising the section heading
and by revising paragraphs (a) through (e) and (h) to read as follows:
1.495 Entering the national stage in the United States of America.
(a) The applicant in an international application must fulfill
the requirements of 35 U.S.C. 371 within the time periods set forth in
paragraphs (b) and (c) of this section in order to prevent the
abandonment of the international application as to the United States of
America. The thirty-month time period set forth in paragraphs (b), (c),
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(d), (e) and (h) of this section may not be extended. International
applications for which those requirements are timely fulfilled will
enter the national stage and obtain an examination as to the
patentability of the invention in the United States of America.
(b) To avoid abandonment of the application, the applicant shall
furnish to the United States Patent and Trademark Office not later than
the expiration of thirty months from the priority date:
(1) A copy of the international application, unless it has been
previously communicated by the International Bureau or unless it was
originally filed in the United States Patent and Trademark Office; and
(2) The basic national fee (see 1.492(a)).
(c) If applicant complies with paragraph (b) of this section before
expiration of thirty months from the priority date but omits either a
translation of the international application, as filed, into the
English language, if it was originally filed in another language (35
U.S.C. 371(c)(2)), or the oath or declaration of the inventor (35
U.S.C. 371(c)(4) and 1.497), if a declaration of inventorship in
compliance with 1.497 has not been previously submitted in the
international application under PCT Rule 4.17(iv) within the time
limits provided for in PCT Rule 26ter.1, applicant will be so notified
and given a period of time within which to file the translation and/or
oath or declaration in order to prevent abandonment of the application.
The payment of the processing fee set forth in 1.492(f) is required
for acceptance of an English translation later than the expiration of
thirty months after the priority date. The payment of the surcharge set
forth in 1.492(e) is required for acceptance of the oath or
declaration of the inventor later than the expiration of thirty months
after the priority date. A "Sequence Listing" need not be
translated if the "Sequence Listing" complies with PCT Rule 12.1(d)
and the description complies with PCT Rule 5.2(b).
(d) A copy of any amendments to the claims made under PCT Article 19,
and a translation of those amendments into English, if they were made
in another language, must be furnished not later than the expiration of
thirty months from the priority date. Amendments under PCT Article 19
which are not received by the expiration of thirty months from the
priority date will be considered to be canceled.
(e) A translation into English of any annexes to an international
preliminary examination report (if applicable), if the annexes were
made in another language, must be furnished not later than the
expiration of thirty months from the priority date. Translations of the
annexes which are not received by the expiration of thirty months from
the priority date may be submitted within any period set pursuant to
paragraph (c) of this section accompanied by the processing fee set
forth in 1.492(f). Annexes for which translations are not timely
received will be considered canceled.
* * * * *
(h) An international application becomes abandoned as to the
United States thirty months from the priority date if the requirements
of paragraph (b) of this section have not been complied with within
thirty months from the priority date. If the requirements of paragraph
(b) of this section are complied with within thirty months from the
priority date but either of any required translation of the
international application as filed or the oath or declaration are not
timely filed, an international application will become abandoned as to
the United States upon expiration of the time period set pursuant to
paragraph (c) of this section.
14. Section 1.497 is amended by revising the introductory text
of paragraph (a) and paragraphs (c), (d) and (f) to read as follows:
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1.497 Oath or declaration under 35 U.S.C. 371(c)(4).
(a) When an applicant of an international application desires
to enter the national stage under 35 U.S.C. 371 pursuant to 1.495,
and a declaration in compliance with this section has not been
previously submitted in the international application under PCT Rule
4.17(iv) within the time limits provided for in PCT Rule 26ter.1, he or
she must file an oath or declaration that:
* * * * *
(c) Subject to paragraph (f) of this section, if the oath or
declaration meets the requirements of paragraphs (a) and (b) of this
section, the oath or declaration will be accepted as complying with 35
U.S.C. 371(c)(4) and 1.495(c). However, if the oath or declaration
does not also meet the requirements of 1.63, a supplemental oath or
declaration in compliance with 1.63 or an application date sheet
will be required in accordance with 1.67.
(d) If the oath or declaration filed pursuant to 35 U.S.C. 371(c)(4)
and this section names an inventive entity different from the inventive
entity set forth in the international application, or if a change to
the inventive entity has been effected under PCT Rule 92bis subsequent
to the execution of any oath or declaration which was filed in the
application under PCT Rule 4.17(iv) or this section and the inventive
entity thus changed is different from the inventive entity identified
in any such oath or declaration, applicant must submit:
(1) A statement from each person being added as an inventor and from
each person being deleted as an inventor that any error in inventorship
in the international application occurred without deceptive intention
on his or her part;
(2) The processing fee set forth in 1.17(i);
(3) If an assignment has been executed by any of the original named
inventors, the written consent of the assignee (see 3.73(b) of this
chapter); and
(4) Any new oath or declaration required by paragraph (f) of this
section.
* * * * *
(f) A new oath or declaration in accordance with this section
must be filed to satisfy 35 U.S.C. 371(c)(4) if the declaration was
filed under PCT Rule 4.17(iv), and:
(1) There was a change in the international filing date pursuant to PCT
Rule 20.2 after the declaration was executed; or
(2) A change in the inventive entity was effected under PCT Rule 92bis
after the declaration was executed and no declaration which sets forth
and is executed by the inventive entity as so changed has been filed in
the application.
* * * * *
December 27, 2001 JAMES E. ROGAN
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[1254 OG 204]