35 U.S.C. § 371 — National stage: Commencement

submitted 51 years ago by Pub. L. 94-131 to r/title-35-PATENTS · 589 words · no verdicts yet

in plain englishAI-generated · not legal advice

This law explains how an international patent application moves into the U.S. national stage. The national stage starts once certain treaty deadlines pass. The applicant must then file fees, translations, and an inventor's oath by set deadlines. Missing those deadlines can mean the application is treated as abandoned.

(a) In cases involving international applications that name or "elect" the United States, the Patent and Trademark Office may require copies from the International Bureau: the international application itself, any amendments to its claims, the international search report, and the international preliminary examination report with any attachments. (b) Subject to (f), the "national stage" — the U.S. portion of examining the application — starts once the deadline under article 22(1) or (2), or article 39(1)(a), of the treaty runs out. (c) By that point, the applicant must file with the Patent and Trademark Office: (1) the national fee required under section 41(a); (2) a copy of the international application — unless it's not required under (a), or the International Bureau already sent it — plus an English translation if it wasn't originally filed in English; (3) any amendments made to the claims under article 19 of the treaty, unless the International Bureau already sent them, plus an English translation if they weren't made in English; (4) an inventor's oath or declaration meeting the requirements of section 115 and the applicable regulations; and (5) an English translation of any attachments to the international preliminary examination report, if those attachments weren't in English. (d) The national fee (c)(1), the translation in (c)(2), and the oath or declaration in (c)(4) must be filed by the date the national stage starts, or by a later date the Director sets. The copy of the international application in (c)(2) must be filed by the start of the national stage. Missing these deadlines means the application is treated as abandoned. The Director can require a surcharge to accept a late national fee or oath/declaration if they miss the national-stage start date. The claim amendments in (c)(3) must also be filed by the start of the national stage — missing that deadline cancels those amendments. The translation in (c)(5) must be filed by whatever date the Director sets — missing that deadline cancels the amendments made under article 34(2)(b) of the treaty. (e) Once an application enters the national stage, the Patent Office cannot grant or refuse a patent on it before the deadline under article 28 or article 41 of the treaty runs out, unless the applicant expressly agrees to move faster. After the national stage begins, the applicant may amend the specification, claims, and drawings. (f) At the applicant's express request, the national stage can start earlier — any time the application is ready for that purpose and the applicant has met the requirements of (c).

the actual law source: uscode.house.gov ↗public domain

(a)

Receipt from the International Bureau of copies of international applications with any amendments to the claims, international search reports, and international preliminary examination reports including any annexes thereto may be required in the case of international applications designating or electing the United States.

(b)

Subject to subsection (f) of this section, the national stage shall commence with the expiration of the applicable time limit under article 22(1) or (2), or under article 39(1)(a) of the treaty.

(c)

The applicant shall file in the Patent and Trademark Office—

(1)

the national fee provided in section 41(a);

(2)

a copy of the international application, unless not required under subsection (a) of this section or already communicated by the International Bureau, and a translation into the English language of the international application, if it was filed in another language;

(3)

amendments, if any, to the claims in the international application, made under article 19 of the treaty, unless such amendments have been communicated to the Patent and Trademark Office by the International Bureau, and a translation into the English language if such amendments were made in another language;

(4)

an oath or declaration of the inventor (or other person authorized under chapter 11) complying with the requirements of section 115 and with regulations prescribed for oaths or declarations of applicants;

(5)

a translation into the English language of any annexes to the international preliminary examination report, if such annexes were made in another language.

(d)

The requirements with respect to the national fee referred to in subsection (c)(1), the translation referred to in subsection (c)(2), and the oath or declaration referred to in subsection (c)(4) of this section shall be complied with by the date of the commencement of the national stage or by such later time as may be fixed by the Director. The copy of the international application referred to in subsection (c)(2) shall be submitted by the date of the commencement of the national stage. Failure to comply with these requirements shall be regarded as abandonment of the application by the parties thereof. The payment of a surcharge may be required as a condition of accepting the national fee referred to in subsection (c)(1) or the oath or declaration referred to in subsection (c)(4) of this section if these requirements are not met by the date of the commencement of the national stage. The requirements of subsection (c)(3) of this section shall be complied with by the date of the commencement of the national stage, and failure to do so shall be regarded as a cancellation of the amendments to the claims in the international application made under article 19 of the treaty. The requirement of subsection (c)(5) shall be complied with at such time as may be fixed by the Director and failure to do so shall be regarded as cancellation of the amendments made under article 34(2)(b) of the treaty.

(e)

After an international application has entered the national stage, no patent may be granted or refused thereon before the expiration of the applicable time limit under article 28 or article 41 of the treaty, except with the express consent of the applicant. The applicant may present amendments to the specification, claims and drawings of the application after the national stage has commenced.

(f)

At the express request of the applicant, the national stage of processing may be commenced at any time at which the application is in order for such purpose and the applicable requirements of subsection (c) of this section have been complied with.

Source credit: (Added Pub. L. 94–131, § 1, Nov. 14, 1975, 89 Stat. 688; amended Pub. L. 98–622, title IV, §§ 402(a)–(d), 403(a), Nov. 8, 1984, 98 Stat. 3391, 3392; Pub. L. 99–616, § 7, Nov. 6, 1986, 100 Stat. 3486; Pub. L. 102–204, § 5(g)(2), Dec. 10, 1991, 105 Stat. 1641; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582; Pub. L. 107–273, div. C, title III, § 13206(a)(20), (b)(1)(B), Nov. 2, 2002, 116 Stat. 1905, 1906; Pub. L. 112–29, § 20(i)(5), (j), Sept. 16, 2011, 125 Stat. 335; Pub. L. 112–211, title II, § 202(b)(9), Dec. 18, 2012, 126 Stat. 1536.)

history & why it existsrecord from the source credit

1975Enacted · Pub. L. 94-131 · 89 Stat. 688
1984Amended · Pub. L. 98-622 · 98 Stat. 3391, 3392
1986Amended · Pub. L. 99-616 · 100 Stat. 3486
1991Amended · Pub. L. 102-204 · 105 Stat. 1641
1999Amended · Pub. L. 106-113 · 113 Stat. 1536, 1501
2002Amended · Pub. L. 107-273 · 116 Stat. 1905, 1906
2011Amended · Pub. L. 112-29 · 125 Stat. 335
2012Amended · Pub. L. 112-211 · 126 Stat. 1536

A history note hasn’t been published yet. The record shows enactment by Pub. L. 94-131 on 1975-11-14.

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