Revision of Patent Cooperation Treaty Application Procedure

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]

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