37 CFR 1.495 (pre‑AIA): Entering the national stage in the United States of America

Taken from the Ninth Edition of the MPEP, Revision 07.2015, Last Revised in November 2015

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1.495 (pre‑AIA)    Entering the national stage in the United States of America.

[Editor Note: Paragraphs (a), (c), 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*]

  • (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.
  • * * * * *
  • (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 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 26 ter.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, oath or declaration of the inventor, 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 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 oath or declaration of the inventor after the date of the commencement of the national stage (§ 1.491(a) ).
    • (4) 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).
  • * * * * *
  • (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.
[*See § 1.495 for more information and for the current rule, including the portions of the rule not reproduced above and applicable irrespective of application filing date and paras. (a), (c), and (h) applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]