[Federal Register Volume 67, Number 3 (Friday, January 4, 2002)]
[Rules and Regulations]
[Pages 520-524]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 02-157]


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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.

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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 
applicant wants to delay commencement of the national stage until 
thirty months from the priority date.

[[Page 521]]

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 Sec. 1.494 (which is removed and reserved).
    Section 1.14: Section 1.14(d)(4) is amended to eliminate its 
reference to Sec. 1.494 (which is removed and reserved).
    Section 1.25: Section 1.25(b) is amended to eliminate its reference 
to Sec. 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 Sec. 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 
Sec. 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 Sec. 1.494 or Sec. 1.495'' to 
``enter the national stage under 35 U.S.C. 371'' (Sec. 1.494 is removed 
and reserved).
    Section 1.103: Section 1.103(d)(1) is amended to eliminate its 
reference to Sec. 1.494 (which is removed and reserved).
    Section 1.417: Section 1.417 is amended to eliminate its reference 
to Sec. 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 Sec. 1.480(c) is now 
unnecessary because the provisions of Sec. 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 Sec. 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 Sec. 1.491 
amended to eliminate its reference to Sec. 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 35 U.S.C. 371(c) within the period set in Sec. 1.495.
    The Office previously published a temporary rule that amends 
Sec. 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 Sec. 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 Sec. 1.491.
    Section 1.492: Sections 1.492(e) and (f) are amended to eliminate 
their reference to Sec. 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 Sec. 1.494 and Sec. 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 (Sec. 1.494); and (2) 
applications in which a Demand under Article 31 has been filed within 
nineteen months from the priority date (Sec. 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 Sec. 1.495(b) and Sec. 1.495(c).
    Section 1.497: Sections 1.497(a) and 1.497(c) are amended to 
eliminate their reference to Sec. 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 Sec. 1.497, the requirements of 
Sec. 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 Sec. 1.497. Section 1.497(d) is 
also amended such that a new oath or declaration is not required under 
Sec. 1.497(d) unless a new oath or declaration is required by 
Sec. 1.497(f). Section 1.497(f) is amended to provide that a new oath 
or declaration under Sec. 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 
Sec. 1.497(d) to enter the national stage but a new oath or declaration 
under Sec. 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

[[Page 522]]

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 
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 Sec. 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.
    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 
Sec. 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 
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:

[[Page 523]]

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:


Sec. 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 Sec. 1.495(b).
* * * * *

    3. Section 1.14 is amended by revising paragraph (d)(4) to read as 
follows:


Sec. 1.14  Patent applications preserved in confidence.

* * * * *
    (d) * * *
    (4) A registered attorney or agent named in the papers accompanying 
the application papers filed under Sec. 1.53 or the national stage 
documents filed under Sec. 1.495, if an executed oath or declaration 
pursuant to Sec. 1.63 or Sec. 1.497 has not been filed.
* * * * *

    4. Section 1.25 is amended by revising paragraph (b) to read as 
follows:


Sec. 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 Secs. 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 
Sec. 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 Sec. 1.492. An authorization to charge fees set forth in 
Sec. 1.18 to a deposit account is subject to the provisions of 
Sec. 1.311(b). An authorization to charge to a deposit account the fee 
for a request for reexamination pursuant to Sec. 1.510 or Sec. 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:


Sec. 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 Sec. 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) 
(Sec. 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:


Sec. 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 Sec. 1.53(b) without 
an executed oath or declaration under Sec. 1.63 by any of the 
inventors, the first submission of an executed oath or declaration 
under Sec. 1.63 by any of the inventors during the pendency of the 
application will act to correct the earlier identification of 
inventorship. See Secs. 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:


Sec. 1.103  Suspension of action by the Office.

* * * * *
    (d) * * *
    (1) The application is an original utility or plant application 
filed under Sec. 1.53(b) or resulting from entry of an international 
application into the national stage after compliance with Sec. 1.495;
* * * * *

    8. Section 1.417 is revised to read as follows:


Sec. 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 (Sec. 1.5(a)) and, unless it is being submitted 
pursuant to Sec. 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:


Sec. 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 Sec. 1.495.

    11. Section 1.492 is amended by revising paragraphs (e) and (f) to 
read as follows:


Sec. 1.492  National stage fees.

* * * * *
    (e) Surcharge for filing the oath or declaration later than thirty 
months from the priority date pursuant to Sec. 1.495(c):

By a small entity (Sec.  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 
(Sec. 1.495(c) and (e))..................$130.00.
* * * * *

    12. Section 1.494 is removed and reserved.


Sec. 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:

[[Page 524]]

Sec. 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), 
(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 Sec. 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 Sec. 1.497), if a declaration of inventorship in 
compliance with Sec. 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 Sec. 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 Sec. 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 Sec. 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:


Sec. 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 Sec. 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 Sec. 1.495(c). However, if the oath or declaration 
does not also meet the requirements of Sec. 1.63, a supplemental oath 
or declaration in compliance with Sec. 1.63 or an application date 
sheet will be required in accordance with Sec. 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 Sec. 1.17(i);
    (3) If an assignment has been executed by any of the original named 
inventors, the written consent of the assignee (see Sec. 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.
* * * * *

    Dated: December 27, 2001.
James E. Rogan,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 02-157 Filed 1-3-02; 8:45 am]
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