INTELLECTUAL PROPERTY RIGHTS

NATIONAL LEGISLATION - USA

Patent Laws and Regulations

Laws: Title 35, Parts I to IV, United States Code

Regulations: Title 37, Chapter I (Subchapter A, Parts 1, 3, 5, 7, 10, 15, and 15a and Subchapter B); Chapter IV and Chapter V, Code of Federal Regulations.

CHAPTER 30 – PRIOR ART CITATIONS TO OFFICE AND REEXAMINATION OF PATENTS                                                                                                      (Continued)

35 U.S.C. � 305 Conduct of reexamination proceedings

After the times for filing the statement and reply provided for by section 304 of this title have expired, reexamination will be conducted according to the procedures established for initial examination under the provisions of sections 132 and 133 of this title. In any reexamination proceeding under this chapter, the patent owner will be permitted to propose any amendment to his patent and a new claim or claims thereto, in order to distinguish the invention as claimed from the prior art cited under the provisions of section 301 of this title, or in response to a decision adverse to the patentability of a claim of a patent. No proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding under this chapter. All reexamination proceedings under this section, including any appeal to the Board of Patent Appeals and Interferences, will be conducted with special dispatch within the Office.

(Added Dec. 12, 1980, Pub. L. 96-517, � 1, 94 Stat. 3016.)

(As amended Nov. 8, 1984, Pub. L. 98-622, Title II, � 204(c), 98 Stat. 3388.)

35 U.S.C. � 306 Appeal

The patent owner involved in a reexamination proceeding under this chapter may appeal under the provisions of section 134 of this title, and may seek court review under the provisions of sections 141 to 145 of this title, with respect to any decision adverse to the patentability of any original or proposed amended or new claim of the patent.

(Added Dec. 12, 1980, Pub. L. 96-517, � 1, 94 Stat. 3016.)

35 U.S.C. � 307 Certificate of patentability, unpatentability, and claim cancellation

(a) In a reexamination proceeding under this chapter, when the time for appeal has expired or any appeal proceeding has terminated, the Commissioner will issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent any proposed amended or new claim determined to be patentable.

(b) Any proposed amended or new claim determined to be patentable and incorporated into a patent following a reexamination proceeding will have the same effect as that specified in section 252 of this title for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States, anything patented by such proposed amended or new claim, or who made substantial preparation for the same, prior to issuance of a certificate under the provisions of subsection (a) of this section.

(Added Dec. 12, 1980, Pub. L. 96-517, � 1, 94 Stat. 3016.)

(As amended Dec. 8, 1994, Pub. L. 103-465, Title V, Subtitle C, � 533(b)(8), 108 Stat. 4990.)

PART IV – PATENT COOPERATION TREATY

CHAPTER 35 – DEFINITIONS

35 U.S.C. � 351 Definitions

When used in this part unless the context otherwise indicates--

(a) The term “treaty” means the Patent Cooperation Treaty done at Washington, on June 19, 1970.

(b) The term “Regulations”, when capitalized, means the Regulations under the treaty, done at Washington on the same date as the treaty. The term “regulations”, when not capitalized, means the regulations established by the Commissioner under this title.

(c) The term “international application” means an application filed under the treaty.

(d) The term “international application originating in the United States” means an international application filed in the Patent and Trademark Office when it is acting as a Receiving Office under the treaty, irrespective of whether or not the United States has been designated in that international application.

(e) The term “international application designating the United States” means an international application specifying the United States as a country in which a patent is sought, regardless where such international application is filed.

(f) The term “Receiving Office” means a national patent office or intergovernmental organization which receives and processes international applications as prescribed by the treaty and the Regulations.

(g) The terms “International Searching Authority” and “International Preliminary Examining Authority” mean a national patent office or intergovernmental organization as appointed under the treaty which processes international applications as prescribed by the treaty and the Regulations.

(h) The term “International Bureau” means the international intergovernmental organization which is recognized as the coordinating body under the treaty and the Regulations.

(i) Terms and expressions not defined in this part are to be taken in the sense indicated by the treaty and the Regulations.

(Added Nov. 14, 1975, Pub. L. 94-131, � 1, 89 Stat. 685.)

(As amended Nov. 8, 1984, Pub. L. 98-622, Title IV, � 403(a) in part, 98 Stat. 3392; Nov. 6, 1986, Pub. L. 99-616, � 2(a)-(c), 100 Stat. 3485.)

CHAPTER 36 – INTERNATIONAL STAGE

35 U.S.C. � 361 Receiving Office

(a) The Patent and Trademark Office shall act as a Receiving Office for international applications filed by nationals or residents of the United States. In accordance with any agreement made between the United States and another country, the Patent and Trademark Office may also act as a Receiving Office for international applications filed by residents or nationals of such country who are entitled to file international applications.

(b) The Patent and Trademark Office shall perform all acts connected with the discharge of duties required of a Receiving Office, including the collection of international fees and their transmittal to the International Bureau.

(c) International applications filed in the Patent and Trademark Office shall be in the English language.

(d) The international fee, and the transmittal and search fees prescribed under section 376(a) of this part, shall either be paid on filing of an international application or within such later time as may be fixed by the Commissioner.

(Added Nov. 14, 1975, Pub. L. 94-131, � 1, 89 Stat. 686.)

(As amended Nov. 8, 1984, Pub. L. 98-622, Title IV, �� 401(a), 403(a) in part, 98 Stat. 3391, 3392; Nov. 6, 1986, Pub. L. 99-616, � 2(d), 100 Stat. 3485.)

35 U.S.C. � 362 International Searching Authority and International Preliminary Examining Authority

(a) The Patent and Trademark Office may act as an International Searching Authority and International Preliminary Examining Authority with respect to international applications in accordance with the terms and conditions of an agreement which may be concluded with the International Bureau, and may discharge all duties required of such Authorities, including the collection of handling fees and their transmittal to the International Bureau.

(b) The handling fee, preliminary examination fee, and any additional fees due for international preliminary examination shall be paid within such time as may be fixed by the Commissioner.

(Added Nov. 14, 1975, Pub. L. 94-131, � 1, 89 Stat. 686.)

(As amended Nov. 8, 1984, Pub. L. 98-622, Title IV, � 403(a) in part, 98 Stat. 3392; Nov. 6, 1986, Pub. L. 99-616, � 4, 100 Stat. 3485.)

35 U.S.C. � 363 International application designating the United States: Effect

An international application designating the United States shall have the effect, from its international filing date under article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office except as otherwise provided in section 102(e) of this title.

(Added Nov. 14, 1975, Pub. L. 94-131, � 1, 89 Stat. 686.)

(As amended Nov. 8, 1984, Pub. L. 98-622, Title IV, � 403(a) in part, 98 Stat. 3392.)

35 U.S.C. � 364 International stage: Procedure

(a) International applications shall be processed by the Patent and Trademark Office when acting as a Receiving Office, International Searching Authority, or International Preliminary Examining Authority in accordance with the applicable provisions of the treaty, the Regulations, and this title.

(b) An applicant's failure to act within prescribed time limits in connection with requirements pertaining to a pending international application may be excused upon a showing satisfactory to the Commissioner of unavoidable delay, to the extent not precluded by the treaty and the Regulations, and provided the conditions imposed by the treaty and the Regulations regarding the excuse of such failure to act are complied with.

(Added Nov. 14, 1975, Pub. L. 94-131, � 1, 89 Stat. 686.)

(As amended Nov. 8, 1984, Pub. L. 98-622, Title IV, � 403(a) in part, 98 Stat. 3392; Nov. 6, 1986, Pub. L. 99-616, � 5, 100 Stat. 3485.)

35 U.S.C. � 365 Right of priority; benefit of the filing date of a prior application

(a) In accordance with the conditions and requirements of subsections (a) through (d) of section 119 of this title, a national application shall be entitled to the right of priority based on a prior filed international application which designated at least one country other than the United States.

(b) In accordance with the conditions and requirement of section 119(a) of this title and the treaty and the Regulations, an international application designating the United States shall be entitled to the right of priority based on a prior foreign application, or a prior international application designating at least one country other than the United States.

(c) In accordance with the conditions and requirements of section 120 of this title, an international application designating the United States shall be entitled to the benefit of the filing date of a prior national application or a prior international application designating the United States, and a national application shall be entitled to the benefit of the filing date of a prior international application designating the United States. If any claim for the benefit of an earlier filing date is based on a prior international application which designated but did not originate in the United States, the Commissioner may require the filing in the Patent and Trademark Office of a certified copy of such application together with a translation thereof into the English language, if it was filed in another language.

(Added Nov. 14, 1975, Pub. L. 94-131, � 1, 89 Stat. 686.)

(As amended Nov. 8, 1984, Pub. L. 98-622, Title IV, � 403(a) in part, 98 Stat. 3392; Dec. 8, 1994, Pub. L. 103-465, Title V, Subtitle C, � 532(c)(4), 108 Stat. 4987.)

35 U.S.C. � 366 Withdrawn international application

Subject to section 367 of this part , if an international application designating the United States is withdrawn or considered withdrawn, either generally or as to the United States, under the conditions of the treaty and the Regulations, before the applicant has complied with the applicable requirements prescribed by section 371(c) of this part, the designation of the United States shall have no effect after the date of withdrawal, and shall be considered as not having been made, unless a claim for the benefit of a prior filing date under section 365(c) of this part was made in a national application, or an international application designating the United States, filed before the date of such withdrawal. However, such withdrawn international application may serve as the basis for a claim of priority under section 365(a) and (b) of this part, if it designated a country other than the United States.

(Added Nov. 14, 1975, Pub. L. 94-131, � 1, 89 Stat. 687.)

(As amended Nov. 8, 1984, Pub. L. 98-622, Title IV, � 401(b), 98 Stat. 3391.)

35 U.S.C. � 367 Actions of other authorities: Review

(a) Where a Receiving Office other than the Patent and Trademark Office has refused to accord an international filing date to an international application designating the United States or where it has held such application to be withdrawn either generally or as to the United States, the applicant may request review of the matter by the Commissioner, on compliance with the requirements of and within the time limits specified by the treaty and the Regulations. Such review may result in a determination that such application be considered as pending in the national stage.

(b) The review under subsection (a) of this section, subject to the same requirements and conditions, may also be requested in those instances where an international application designating the United States is considered withdrawn due to a finding by the International Bureau under article 12(3) of the treaty.

(Added Nov. 14, 1975, Pub. L. 94-131, � 1, 89 Stat. 687.)

(As amended Nov. 8, 1984, Pub. L. 98-622, Title IV, � 403(a) in part, 98 Stat. 3392.)

35 U.S.C. � 368 Secrecy of certain inventions; filing international applications in foreign countries

(a) International applications filed in the Patent and Trademark Office shall be subject to the provisions of chapter 17 of this title.

(b) In accordance with article 27(8) of the treaty, the filing of an international application in a country other than the United States on the invention made in this country shall be considered to constitute the filing of an application in a foreign country within the meaning of chapter 17 of this title, whether or not the United States is designated in that international application.

(c) If a license to file in a foreign county is refused or if an international application is ordered to be kept secret and a permit refused, the Patent and Trademark Office when acting as a Receiving Office, International Searching Authority, or International Preliminary Examining Authority, may not disclose the contents of such application to anyone not authorized to receive such disclosure.

(Added Nov. 14, 1975, Pub. L. 94-131, � 1, 89 Stat. 687.)

(As amended Nov. 8, 1984, Pub. L. 98-622, Title IV, � 403(a) in part, 98 Stat. 3392; Nov. 6, 1986, Pub. L. 99-616, � 6, 100 Stat. 3486.)

CHAPTER 37 – NATIONAL STAGE

35 U.S.C. � 371 National stage: Commencement

(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) of this title;

(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 of this title complying with the requirements of section 115 of this title 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 Commissioner. 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, unless it be shown to the satisfaction of the Commissioner that such failure to comply was unavoidable. 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 claim 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 Commissioner 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.

(Added Nov. 14, 1975, Pub. L. 94-131, � 1, 89 Stat. 688.)

(As amended Nov. 8, 1984, Pub. L. 98-622, Title IV, �� 402(a)--(d), 403(a) in part, 98 Stat. 3391, 3392; Nov. 6, 1986, Pub. L. 99-616, � 7, 100 Stat. 3486; Dec. 10, 1991, Pub. L. 102-204, � 5(g)(2), 105 Stat. 1641.)

35 U.S.C. � 372 National stage: Requirements and procedure

(a) All questions of substance and, within the scope of the requirements of the treaty and Regulations, procedure in an international application designating the United States shall be determined as in the case of national applications regularly filed in the Patent and Trademark Office.

(b) In case of international applications designating but not originating in, the United States--

(1) the Commissioner may cause to be reexamined questions relating to form and contents of the application in accordance with the requirements of the treaty and the Regulations;

(2) the Commissioner may cause the question of unity of invention to be reexamined under section 121 of this title, within the scope of the requirements of the treaty and the Regulations; and

(3) the Commissioner may require a verification of the translation of the international application or any other document pertaining to the application if the application or other document was filed in a language other than English.

(c) [Repealed]

(Added Nov. 14, 1975, Pub. L. 94-131, � 1, 89 Stat. 689.)

(As amended Nov. 8, 1984, Pub. L. 98-622, Title IV, �� 402(e), (f), 403(a) in part, 98 Stat. 3392.)

35 U.S.C. � 373 Improper applicant

An international application designating the United States, shall not be accepted by the Patent and Trademark Office for the national stage if it was filed by anyone not qualified under chapter 11 of this title to be an applicant for the purpose of filing a national application in the United States. Such international applications shall not serve as the basis for the benefit of an earlier filing date under section 120 of this title in a subsequently filed application, but may serve as the basis for a claim of the right of priority under subsections (a) through (d) of section 119 of this title, if the United States was not the sole country designated in such international application.

(Added Nov. 14, 1975, Pub. L. 94-131, � 1, 89 Stat. 689.)

(As amended Nov. 8, 1984, Pub. L. 98-622, Title IV, � 403(a) in part, 98 Stat. 3392; Dec. 8, 1994, Pub. L. 103-465, Title V, Subtitle C, � 532(c)(5), 108 Stat. 4987.)

35 U.S.C. � 374 Publication of international application: Effect

The publication under the treaty of an international application shall confer no rights and shall have no effect under this title other than that of a printed publication.

(Added Nov. 14, 1975, Pub. L. 94-131, � 1, 89 Stat. 689.)

35 U.S.C. � 375 Patent issued on international application: Effect

(a) A patent may be issued by the Commissioner based on an international application designating the United States, in accordance with the provisions of this title. Subject to section 102(e) of this title, such patent shall have the force and effect of a patent issued on a national application filed under the provisions of chapter 11 of this title.

(b) Where due to an incorrect translation the scope of a patent granted on an international application designating the United States, which was not originally filed in the English language, exceeds the scope of the international application in its original language, a court of competent jurisdiction may retroactively limit the scope of the patent, by declaring it unenforceable to the extent that it exceeds the scope of the international application in its original language.

(Added Nov. 14, 1975, Pub. L. 94-131, � 1, 89 Stat. 689.)

35 U.S.C. � 376 Fees

(a) The required payment of the international fee and the handling fee, which amounts are specified in the Regulations, shall be paid in United States currency. The Patent and Trademark Office shall charge a national fee as provided in section 41(a), and may also charge the following fees:

(1) A transmittal fee (see section 361(d);

(2) A search fee (see section 361(d);

(3) A supplemental search fee (to be paid when required);

(4) A preliminary examination fee and any additional fees (see section 362(b)).

(5) Such other fees as established by the Commissioner.

(b) The amounts of fees specified in subsection (a) of this section, except the international fee, and the handling fee shall be prescribed by the Commissioner. He may refund any sum paid by mistake or in excess of the fees so specified, or if required under the treaty and the Regulations. The Commissioner may also refund any part of the search fee, the national fee, the preliminary examination fee, and any additional fees, where he determines such refund to be warranted.

(Added Nov. 14, 1975, Pub. L. 94-131, � 1, 89 Stat. 690.)

(As amended Nov. 8, 1984, Pub. L. 98-622, Title IV, �� 402(g), 403(a) in part, 98 Stat. 3392; Nov. 6, 1986, Pub. L. 99-616, � 8, 100 Stat. 3486; Dec. 10, 1991, Pub. L. 102-204, � 5(g)(1), 105 Stat. 1640.)