PCT Rule 49 — Copy, Translation and Fee under Article 22 (MPEP Coverage Index) – BlueIron IP
PCT Rule 49 Copy, Translation and Fee under Article 22
This page consolidates MPEP guidance interpreting PCT Rule 49, including 11 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Official MPEP § 49 — Copy, Translation and Fee under Article 22
Source: USPTOLast Modified: 10/30/2024 08:50:22
Rule 49 Copy, Translation and Fee under Article 22
49.1 Notification
- (a) Any Contracting State requiring the furnishing of a
translation or the payment of a national fee, or both, under
Article
22
, shall notify the International Bureau of:
- (i) the languages from which and the language into which it requires translation,
- (ii) the amount of the national fee.
- (a-bis) Any Contracting State not requiring the furnishing, under Article 22 , by the applicant of a copy of the international application (even though the communication of the copy of the international application by the International Bureau under Rule 47 has not taken place by the expiration of the time limit applicable under Article 22 ) shall notify the International Bureau accordingly.
- (a-ter) Any Contracting State which, pursuant to Article 24(2) , maintains, if it is a designated State, the effect provided for in Article 11(3) even though a copy of the international application is not furnished by the applicant by the expiration of the time limit applicable under Article 22 shall notify the International Bureau accordingly.
- (b) Any notification received by the International Bureau under paragraphs (a), (a- bis) or (a- ter) shall be promptly published by the International Bureau in the Gazette.
- (c) If the requirements under paragraph (a) change later, such changes shall be notified by the Contracting State to the International Bureau and that Bureau shall promptly publish the notification in the Gazette. If the change means that translation is required into a language which, before the change, was not required, such change shall be effective only with respect to international applications filed later than two months after the publication of the notification in the Gazette. Otherwise, the effective date of any change shall be determined by the Contracting State.
49.2 Languages
The language into which translation may be required must be an official language of the designated Office. If there are several of such languages, no translation may be required if the international application is in one of them. If there are several official languages and a translation must be furnished, the applicant may choose any of those languages. Notwithstanding the foregoing provisions of this paragraph, if there are several official languages but the national law prescribes the use of one such language for foreigners, a translation into that language may be required.
49.3 Statements under Article 19; Indications under Rule 13 bis.4
For the purposes of Article 22 and the present Rule, any statement made under Article 19(1) and any indication furnished under Rule 13bis.4 shall, subject to Rule 49.5(c) and (h) , be considered part of the international application.
49.4 Use of National Form
No applicant shall be required to use a national form when performing the acts referred to in Article 22 .
49.5 Contents of and Physical Requirements for the Translation
- (a) For the purposes of
Article 22
, the
translation of the international application shall contain the description
(subject to paragraph (a-
bis)), the claims, any text
matter of the drawings and the abstract. If required by the designated
Office, the translation shall also, subject to paragraphs (b),
(c
-bis) and (e),
- (i) contain the request,
- (ii) if the claims have been amended under Article 19 , contain both the claims as filed and the claims as amended (the claims as amended shall be furnished in the form of a translation of the complete set of claims furnished under Rule 46.5(a) in replacement of all the claims originally filed), and
- (iii) be accompanied by a copy of the drawings.
- (a-bis) No designated Office shall require the applicant to furnish to it a translation of any text matter contained in the sequence listing part of the description if such sequence listing part complies with Rule 12.1(d) and includes the language-dependent free text in a language which the designated Office accepts for the purpose, save that a designated Office which supplies published sequence listings to database providers may require a translation of the sequence listing part of the description into English, in accordance with the Administrative Instructions, where the language-dependent free text is not included in English.
- (b) Any designated Office requiring the furnishing of a translation of the request shall furnish copies of the request form in the language of the translation free of charge to the applicants. The form and contents of the request form in the language of the translation shall not be different from those of the request under Rules 3 and 4 ; in particular, the request form in the language of the translation shall not ask for any information that is not in the request as filed. The use of the request form in the language of the translation shall be optional.
- (c) Where the applicant did not furnish a translation of any statement made under Article 19(1) , the designated Office may disregard such statement.
- (c-bis) Where the applicant furnishes, to a designated Office which requires under paragraph (a)(ii) a translation of both the claims as filed and the claims as amended, only one of the required two translations, the designated Office may disregard the claims of which a translation has not been furnished or invite the applicant to furnish the missing translation within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation. Where the designated Office chooses to invite the applicant to furnish the missing translation and the latter is not furnished within the time limit fixed in the invitation, the designated Office may disregard those claims of which a translation has not been furnished or consider the international application withdrawn.
- (d) If any drawing contains text matter, the translation of that text matter shall be furnished either in the form of a copy of the original drawing with the translation pasted on the original text matter or in the form of a drawing executed anew.
- (e) Any designated Office requiring under paragraph (a) the furnishing of a copy of the drawings shall, where the applicant failed to furnish such copy within the time limit applicable under Article 22 , invite the applicant to furnish such copy within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation.
- (f) The expression “Fig.” does not require translation into any language.
- (g) Where any copy of the drawings or any drawing executed anew which has been furnished under paragraph (d) or (e) does not comply with the physical requirements referred to in Rule 11 , the designated Office may invite the applicant to correct the defect within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation.
- (h) Where the applicant did not furnish a translation of the abstract or of any indication furnished under Rule 13bis.4 , the designated Office shall invite the applicant to furnish such translation, if it deems it to be necessary, within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation.
- (i) Information on any requirement and practice of designated Offices under the second sentence of paragraph (a) shall be published by the International Bureau in the Gazette.
- (j) No designated Office shall require that the translation of the international application comply with physical requirements other than those prescribed for the international application as filed.
- (k) Where a title has been established by the International Searching Authority pursuant to Rule 37.2 , the translation shall contain the title as established by that Authority.
- (l) If, on July 12, 1991, paragraph (c- bis) or paragraph (k) is not compatible with the national law applied by the designated Office, the paragraph concerned shall not apply to that designated Office for as long as it continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by December 31, 1991. The information received shall be promptly published by the International Bureau in the Gazette.
49.6 Reinstatement of Rights after Failure to Perform the Acts Referred to in Article 22
- (a) Where the effect of the international application provided for in Article 11(3) has ceased because the applicant failed to perform the acts referred to in Article 22 within the applicable time limit, the designated Office shall, upon request of the applicant, and subject to paragraphs (b) to (e) of this Rule, reinstate the rights of the applicant with respect to that international application if it finds that any delay in meeting that time limit was unintentional or, at the option of the designated Office, that the failure to meet that time limit occurred in spite of due care required by the circumstances having been taken.
- (b) The request under paragraph (a) shall be submitted to the
designated Office, and the acts referred to in
Article
22
shall be performed, within whichever of the
following periods expires first:
- (i) two months from the date of removal of the cause of the failure to meet the applicable time limit under Article 22 ; or
- (ii) 12 months from the date of the expiration of the applicable time limit under Article 22 ;
provided that the applicant may submit the request at any later time if so permitted by the national law applicable by the designated Office.
- (c) The request under paragraph (a) shall state the reasons for the failure to comply with the applicable time limit under Article 22 .
- (d) The national law applicable by the designated Office may
require:
- (i) that a fee be paid in respect of a request under paragraph (a);
- (ii) that a declaration or other evidence in support of the reasons referred to in paragraph (c) be filed.
- (e) The designated Office shall not refuse a request under paragraph (a) without giving the applicant the opportunity to make observations on the intended refusal within a time limit which shall be reasonable under the circumstances.
- (f) If, on October 1, 2002, paragraphs (a) to (e) are not compatible with the national law applied by the designated Office, those paragraphs shall not apply in respect of that designated Office for as long as they continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by January 1, 2003. The information received shall be promptly published by the International Bureau in the Gazette.
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- Pct Amendments Article 19
- Pct Description Claims
- Pct Filing
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| MPEP Section | Rules |
|---|---|
| MPEP § 1803 | |
| MPEP § 1893.01(d) |