Submissions Required by 30 Months from the Priority Date

37 CFR 1.495 Entering the national stage in the United States of

America.

[Editor Note: Paragraphs (a) and (h) below

are applicable only to patent applications filed under

35 U.S.C.

111(a)

or

363

on or after

September 16, 2012]

(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), (d), (e) and (h) of this section may not be

extended.

(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)

(1) If applicant complies with paragraph (b)

of this section before expiration of thirty months from

the priority date, the Office will notify the applicant

if he or she has omitted any of:

(i) A translation of the

international application, as filed, into the

English language, if it was originally filed in

another language and if any English language

translation of the publication of the

international application previously submitted

under

35 U.S.C.

154(d)

(§

1.417

) is not also a

translation of the international application as

filed (

35 U.S.C.

371(c)(2)

);

(ii) The inventor’s oath or

declaration (

35 U.S.C.

371(c)(4)

and §

1.497

), if a declaration of

inventorship in compliance with §

1.63

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

;

(iii) The search fee set forth in §

1.492(b)

;

(iv) The examination fee set forth

in §

1.492(c)

; and

371(c)(2)

);

(ii) The inventor’s oath or

declaration (

35 U.S.C.

371(c)(4)

and §

1.497

), if a declaration of

inventorship in compliance with §

1.63

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

;

(iii) The search fee set forth in §

1.492(b)

;

(iv) The examination fee set forth

in §

1.492(c)

; and

(v) Any application size fee

required by §

1.492(j)

;

(2) A notice under paragraph (c)(1) of this

section will set a time period within which applicant

must provide any omitted translation, search fee set

forth in §

1.492(b)

, examination fee set

forth in §

1.492(c)

, and any application

size fee required by §

1.492(j)

in order to avoid

abandonment of the application.

(3) The inventor’s oath or declaration must

also be filed within the period specified in paragraph

(c)(2) of this section, except that the filing of the

inventor’s oath or declaration may be postponed until

the application is otherwise in condition for allowance

under the conditions specified in paragraphs (c)(3)(i)

through (c)(3)(iii) of this section.

(i) The application

contains an application data sheet in accordance

with §

1.76

filed prior to the

expiration of the time period set in any notice

under paragraph (c)(1) identifying:

(A) Each inventor by

his or her legal name;

(B) A mailing

address where the inventor customarily receives

mail, and residence, if an inventor lives at a

location which is different from where the

inventor customarily receives mail, for each

inventor.

plication data sheet in accordance

with §

1.76

filed prior to the

expiration of the time period set in any notice

under paragraph (c)(1) identifying:

(A) Each inventor by

his or her legal name;

(B) A mailing

address where the inventor customarily receives

mail, and residence, if an inventor lives at a

location which is different from where the

inventor customarily receives mail, for each

inventor.

(ii) The applicant must

file each required oath or declaration in

compliance with §

1.63

, or substitute statement

in compliance with §

1.64

, no later than the date

on which the issue fee for the patent is paid. If

the applicant is notified in a notice of

allowability that an oath or declaration in

compliance with §

1.63

, or substitute statement

in compliance with §

1.64

, executed by or with

respect to each named inventor has not been filed,

the applicant must file each required oath or

declaration in compliance with §

1.63

, or substitute statement

in compliance with §

1.64

, no later than the date

on which the issue fee is paid to avoid

abandonment. This time period is not extendable

under §

1.136

(see §

1.136(c)

). The Office may

dispense with the notice provided for in paragraph

(c)(1) of this section if each required oath or

declaration in compliance with §

1.63

, or substitute statement

in compliance with §

1.64

, has been filed before

the application is in condition for allowance.

(iii) An international

application in which the basic national fee under

35 U.S.C.

41(a)(1)(F)

has been paid and

for which an application data sheet in accordance

with §

1.76

has been filed may be

treated as complying with

35

U.S.C. 371

for purposes of

eighteen-month publication under

35

U.S.C. 122(b)

and §

1.211

et seq.

§

1.64

, has been filed before

the application is in condition for allowance.

(iii) An international

application in which the basic national fee under

35 U.S.C.

41(a)(1)(F)

has been paid and

for which an application data sheet in accordance

with §

1.76

has been filed may be

treated as complying with

35

U.S.C. 371

for purposes of

eighteen-month publication under

35

U.S.C. 122(b)

and §

1.211

et seq.

(4) The payment of the processing fee set

forth in §

1.492(i)

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(h)

is required for

acceptance of any of the search fee, the examination

fee, or the inventor’s oath or declaration after the

date of the commencement of the national stage (§

1.491(a)

).

(5) For international

applications having an international filing date before

July 1, 2022, 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)

. For international

applications having an international filing date on or

after July 1, 2022, for purposes of paragraph (c)(1)(i)

of this section, an English translation is required for

any sequence listing in XML format (“Sequence Listing

XML”) containing non-English language values for any

language-dependent free text qualifiers in accordance

with §§

1.831

through

1.834

.

(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.

.

(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.

(f) Verification of the translation of the

international application or any other document pertaining to an

international application may be required where it is considered

necessary, if the international application or other document

was filed in a language other than English.

(g) The documents and fees submitted under

paragraphs (b) and (c) of this section must be identified as a

submission to enter the national stage under

35 U.S.C.

371

. If the documents and fees contain

conflicting indications as between an application under

35 U.S.C.

111

and a submission to enter the

national stage under

35 U.S.C.

371

, the documents and fees will be

treated as a submission to enter the national stage under

35 U.S.C.

371

.

paragraphs (b) and (c) of this section must be identified as a

submission to enter the national stage under

35 U.S.C.

371

. If the documents and fees contain

conflicting indications as between an application under

35 U.S.C.

111

and a submission to enter the

national stage under

35 U.S.C.

371

, the documents and fees will be

treated as a submission to enter the national stage under

35 U.S.C.

371

.

(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.

37 CFR 1.495 (pre-AIA) Entering the national stage in the United States of

America.

[Editor Note: Paragraphs (a) and (h) below

are

not applicable

to patent applications filed under

35 U.S.C.

111(a)

or

363

on or after

Sept. 16, 2012. See

§ 1.495

for more

information and for the current rule, including the portions of the rule

not reproduced below and applicable irrespective of application filing

date and paras. (a) and (h) applicable to patent applications filed

under

35 U.S.C. 111(a)

or

363

on or after Sept. 16, 2012]

(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), (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.

* * * * *

the international application as to the United

States of America. The thirty-month time period set forth in

paragraphs (b), (c), (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.

* * * * *

(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.

To avoid abandonment of an international

application as to the United States, applicant is required to comply with

37

CFR 1.495(b)

within 30 months from the priority date.

Thus, applicant must pay the basic national fee not later than the

expiration of 30 months from the priority date and be sure that a copy of

the international application has been received by the U.S. Designated or

Elected Office not later than the expiration of 30 months from the priority

date.

It is preferable to file the required national

stage items online using the USPTO patent electronic filing system (further

information regarding the USPTO patent electronic filing system is available

at

www.uspto.gov/patents-application-process/

file-online

). Applicants may also file these items using the

Priority Mail Express® mailing procedure set forth in

37 CFR

1.10

. Facsimile transmission is not acceptable for

submission of the basic national fee and/or the copy of the international

application. See

37 CFR 1.6(d)

ormation regarding the USPTO patent electronic filing system is available

at

www.uspto.gov/patents-application-process/

file-online

). Applicants may also file these items using the

Priority Mail Express® mailing procedure set forth in

37 CFR

1.10

. Facsimile transmission is not acceptable for

submission of the basic national fee and/or the copy of the international

application. See

37 CFR 1.6(d)

.

Likewise, the certificate of mailing procedures of

37 CFR

1.8

do not apply to the filing of the copy of the

international application and payment of the basic national fee. See

37 CFR

1.8(a)(2)(i)(F)

.

Applicants cannot pay the basic national fee with a

surcharge after the 30 month deadline. Failure to pay the basic national fee

within 30 months from the priority date will result in abandonment of the

application. The time for payment of the basic national fee is not

extendable.

Where the international application was filed with the

United States Receiving Office as the competent receiving Office, the copy

of the international application referred to in

37 CFR

1.495(b)

is not required. Otherwise, the copy of the

international application required under

37 CFR

1.495(b)

must be provided within 30 months from the

priority date to avoid abandonment. A copy of the international application

is published by the International Bureau at about 18 months from the

priority date, at which time the published application becomes available to

the U.S. Designated or Elected Office in electronic form in a digital

library from which the U.S. Designated or Elected Office is entitled to

retrieve the application. Pursuant to PCT

Rule

93bis(b)

, the publication of

the international application by the International Bureau (and the resulting

availability of the published application in a digital library) is

considered to effect the required communication of the copy of the

international application to the U.S. Designated or Elected Office

. Designated or Elected Office is entitled to

retrieve the application. Pursuant to PCT

Rule

93bis(b)

, the publication of

the international application by the International Bureau (and the resulting

availability of the published application in a digital library) is

considered to effect the required communication of the copy of the

international application to the U.S. Designated or Elected Office. Thus,

publication of an international application by the International Bureau

within 30 months from the priority date is considered to satisfy the

requirement of

37 CFR 1.495(b)

.

Where the basic national fee has been paid and the copy of

the international application (if required) has been received not later than

the expiration of 30 months from the priority date, but applicant has

omitted any required item set forth in

37 CFR

1.495(c)(1)

, the Office will process the national

stage application in accordance with the provisions of

37 CFR

1.495

in effect for that application. As a

consequence of the America Invents Act (AIA),

37 CFR

1.495

was amended to permit postponement of the

submission of the inventor’s oath or declaration under certain conditions

and is applicable to national stage applications having an international

filing date on or after September 16, 2012. For national stage applications

having an international filing date prior to September 16, 2012, the pre-AIA

version of

37 CFR 1.45

remains in effect.

If the international filing date is prior to September 16,

2012, and the basic national fee has been paid and the copy of the

international application (if required) has been received not later than the

expiration of 30 months from the priority date, but the required oath or

declaration, translation, search fee (

37 CFR 1.492(b)

),

examination fee (

37 CFR 1.492(c)

), or

application size fee (

37 CFR 1.492(j)

) has

not been filed prior to commencement of the national stage (see

MPEP §

1893.01

), the Office will send applicant a notice

identifying any deficiency and provide a period of time to correct the

def

f 30 months from the priority date, but the required oath or

declaration, translation, search fee (

37 CFR 1.492(b)

),

examination fee (

37 CFR 1.492(c)

), or

application size fee (

37 CFR 1.492(j)

) has

not been filed prior to commencement of the national stage (see

MPEP §

1893.01

), the Office will send applicant a notice

identifying any deficiency and provide a period of time to correct the

deficiency as set forth in

37 CFR 1.495(c)

. The

time period usually set is 2 months from the date of the notification by the

Office or 32 months from the priority date, whichever is later. This period

may be extended for up to 5 additional months pursuant to the provisions of

37 CFR

1.136(a)

. Failure to timely file the proper reply to

the notification will result in abandonment of the national stage

application. The processing fee set forth in

37 CFR

1.492(i)

will be required for acceptance of an

English translation of the international application later than the

expiration of thirty months after the priority date, and the surcharge fee

set forth in

37 CFR 1.492(h)

will be

required for acceptance of any of the search fee, examination fee, or oath

or declaration of the inventor after the date of commencement. See

pre-AIA 37 CFR 1.495(c)(3)

.

If the international filing date is on or after September

16, 2012, the filing of the oath or declaration may be postponed until the

application is otherwise in condition for allowance if applicants submit an

application data sheet in accordance with

37 CFR

1.76

identifying each inventor by the inventor’s

legal name, the mailing address where each inventor customarily receives

mail, and the residence of each inventor, if the inventor lives at a

location which is different from where the inventor customarily receives

mail.

37

CFR 1.495(c)(3)

.

For further information regarding the oath or declaration

required under

35 U.S.C. 371(c)(4)

and

37 CFR

1.497

, including for early entry and RCE filing, see

MPEP §

1893.01(e)

iling address where each inventor customarily receives

mail, and the residence of each inventor, if the inventor lives at a

location which is different from where the inventor customarily receives

mail.

37

CFR 1.495(c)(3)

.

For further information regarding the oath or declaration

required under

35 U.S.C. 371(c)(4)

and

37 CFR

1.497

, including for early entry and RCE filing, see

MPEP §

1893.01(e)

.

For further information regarding the translation required

under

35

U.S.C. 371(c)(2)

and

37 CFR

1.495(c)

, see

MPEP § 1893.01(d)

.