37 CFR § 1.495 — Entering the national stage in the United (MPEP Coverage Index) – BlueIron IP
37 CFR § 1.495 Entering the national stage in the United
This page consolidates MPEP guidance interpreting 37 CFR § 1.495, including 186 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.
Summary
The process of entering the national stage requires naming a patent practitioner in application transmittal papers to allow for representative actions like power of inspection.
What this section covers
- Define that this section covers the requirement for naming a patent practitioner when entering the national stage.
- Identify the core topic of ensuring proper representation through named patent practitioners in national stage applications.
Key obligations
- State that a patent practitioner must be named in the application transmittal papers to allow for power of inspection by representatives.
- Identify that failure to name a patent practitioner can prevent the execution of powers of attorney or other representative actions in national stage applications.
Practice notes
- Advise practitioners to ensure the named patent practitioner is properly listed in all transmittal papers submitted for national stage entry.
- Warn practitioners about the potential delays and complications that can arise from missing or incorrect naming of patent practitioners.
Official MPEP § 1.495 — Entering the national stage in the United
Source: USPTOLast Modified: 10/30/2024 08:50:22
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
- (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.
- (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.
- (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:
- (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 .
- (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:
- (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 .
- (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.
[Added 52 FR 20051, May 28, 1987, effective July 1, 1987; paras. (a) -(e) & (h) amended and para. (i) deleted, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; para. (c) revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para (c) revised, 63 FR 29614, June 1, 1998, effective July 1, 1998 (adopted as final, 63 FR 66040, Dec. 1, 1998), para. (g) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (c)(2) revised, 66 FR 16004, Mar. 22, 2001, effective Mar. 1, 2001 para. (c)(2) corrected, 66 FR 28053, May 22, 2001, effective Mar. 22, 2001; heading and paras. (a)-(e) and (h) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; paras. (c) & (g) revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004; para. (c) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; paras. (c)(1)(i) and (c)(3) revised, 70 FR 30360, May 26, 2005, effective July 1, 2005; para. (g) revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); para. (g) revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); paras. (a), (c), (g), and (h) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (c)(3)(ii) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; para. (c)(5) revised, 87 FR 30806, May 20, 2022, effective July 1, 2022]
[ *The changes to paras. (a) and (h) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.495 (pre‑AIA) for paras. (a) and (h) otherwise in effect.]
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