PCT Rule 51bis — Certain National Requirements Allowed under Article 27 (MPEP Index) – BlueIron IP
PCT Rule 51bis Certain National Requirements Allowed under Article 27
Source: Patent Cooperation Treaty (PCT)BlueIron Update:
This page consolidates MPEP guidance interpreting PCT Rule 51bis, including 5 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
This section addresses the requirement for a single applicant's signature on an international application under PCT Rule 51bis, specifically addressing Article 14(1)(a)(i) and national requirements.
What this section covers
- Defines that this section addresses the requirement for a single applicant’s signature on an international application.
- Identifies that it pertains to the specific requirements under PCT Rule 51bis for Article 14(1)(a)(i) of the PCT Treaty.
Key obligations
- A single applicant must sign the international application in Box No. X of the request form.
- If there are multiple applicants, all must sign the application to comply with PCT Rule 4.15.
- This requirement is subject to certain national requirements under Article 27 of the PCT Treaty.
Practice notes
- Ensure that the signature is placed in Box No. X of the request form for a single applicant.
- Remind practitioners that if there are multiple applicants, all signatures must be included to satisfy the PCT Rule 4.15 requirement.
Official MPEP § 51bis — Certain National Requirements Allowed under Article 27
Source: USPTOLast Modified: 10/30/2024 08:50:22
Rule 51 bis Certain National Requirements Allowed under Article 27
51 bis.1 Certain National Requirements Allowed
- (a) Subject to
Rule
51bis.2
, the national law
applicable by the designated Office may, in accordance with
Article
27
, require the applicant to furnish, in
particular:
- (i) any document relating to the identity of the inventor,
- (ii) any document relating to the applicant’s entitlement to apply for or be granted a patent,
- (iii) any document containing any proof of the applicant’s entitlement to claim priority of an earlier application where the applicant is not the applicant who filed the earlier application or where the applicant’s name has changed since the date on which the earlier application was filed,
- (iv) where the international application designates a State whose national law requires, on October 9, 2012, the furnishing of an oath or declaration of inventorship, any document containing an oath or declaration of inventorship,
- (v) any evidence concerning non-prejudicial disclosures or exceptions to lack of novelty, such as disclosures resulting from abuse, disclosures at certain exhibitions and disclosures by the applicant during a certain period of time;
- (vi) the confirmation of the international application by the signature of any applicant for the designated State who has not signed the request;
- (vii) any missing indication required under Rule 4.5(a)(ii) and (iii) in respect of any applicant for the designated State;
- (viii) in the cases referred to in Rule 82ter.1 , a translation of any erroneously filed element or part removed from the international application in accordance with Rule 20.5bis(b) or (c) .
- (b) The national law applicable by the designated
Office may, in accordance with
Article 27(7)
, require
that
- (i) the applicant be represented by an agent having the right to represent applicants before that Office and/or have an address in the designated State for the purpose of receiving notifications,
- (ii) the agent, if any, representing the applicant be duly appointed by the applicant.
- (c) The national law applicable by the designated Office may, in accordance with Article 27(1) , require that the international application, the translation thereof or any document relating thereto be furnished in more than one copy.
- (d) The national law applicable by the designated Office may,
in accordance with
Article 27(2)(ii)
,
require that the translation of the international application furnished by
the applicant under
Article 22
be:
- (i) verified by the applicant or the person having translated the international application in a statement to the effect that, to the best of his knowledge, the translation is complete and faithful;
- (ii) certified by a public authority or sworn translator, but only where the designated Office may reasonably doubt the accuracy of the translation.
- (e) The national law applicable by the designated Office may,
in accordance with
Article 27
, require the
applicant to furnish a translation of the priority document, provided that
such a translation may only be required:
- (i) where the validity of the priority claim is relevant to the determination of whether the invention concerned is patentable; or
- (ii) where the international filing date has been accorded by the receiving Office under Rule 20.3(b)(ii) , 20.5(d) or 20.5bis(d) on the basis of the incorporation by reference under Rules 4.18 and 20.6 of an element or part, for the purposes of determining under Rule 82ter.1(b) whether that element or part is completely contained in the priority document concerned, in which case the national law applicable by the designated Office may also require the applicant to furnish, in the case of a part of the description, claims or drawings, an indication as to where that part is contained in the translation of the priority document.
51 bis.2 Certain Circumstances in Which Documents or Evidence May Not Be Required
The designated Office shall not, unless it may reasonably doubt the veracity of the indications or declaration concerned, require any document or evidence:
- (i) relating to the identity of the inventor ( Rule 51bis.1(a)(i) ) (other than a document containing an oath or declaration of inventorship ( Rule 51bis.1(a)(iv) ), if indications concerning the inventor, in accordance with Rule 4.6 , are contained in the request or if a declaration as to the identity of the inventor, in accordance with Rule 4.17(i) , is contained in the request or is submitted directly to the designated Office;
- (ii) relating to the applicant’s entitlement, as at the international filing date, to apply for and be granted a patent ( Rule 51bis.1(a)(ii) ), if a declaration as to that matter, in accordance with Rule 4.17(ii) , is contained in the request or is submitted directly to the designated Office;
- (iii) relating to the applicant’s entitlement, as at the international filing date, to claim priority of an earlier application ( Rule 51bis.1(a)(iii) ), if a declaration as to that matter, in accordance with Rule 4.17(iii) , is contained in the request or is submitted directly to the designated Office;
- (iv) containing an oath or declaration of inventorship ( Rule 51bis.1(a)(iv) ), if a declaration of inventorship, in accordance with Rule 4.17(iv) , is contained in the request or is submitted directly to the designated Office.
51 bis.3 Opportunity to Comply with National Requirements
- (a) Where any of the requirements referred to in Rule 51bis.1(a)(i) to (iv) and (c) to (e) , or any other requirement of the national law applicable by the designated Office which that Office may apply in accordance with Article 27(1) or (2) , is not already fulfilled during the same period within which the requirements under Article 22 must be complied with, the designated Office shall invite the applicant to comply with the requirement within a time limit which shall not be less than two months from the date of the invitation. Each designated Office may require that the applicant pay a fee for complying with national requirements in response to the invitation.
- (b) Where any requirement of the national law applicable by the designated Office which that Office may apply in accordance with Article 27(6) or (7) is not already fulfilled during the same period within which the requirements under Article 22 must be complied with, the applicant shall have an opportunity to comply with the requirement after the expiration of that period.
- (c) If, on March 17, 2000, paragraph (a) is not compatible with the national law applied by the designated Office in relation to the time limit referred to in that paragraph, the said paragraph shall not apply in respect of that Office in relation to that time limit for as long as the said paragraph continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by November 30, 2000. The information received shall be promptly published by the International Bureau in the Gazette.