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Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48795sroberts on DSK5SPTVN1PROD with RULESnational stage examination internationalapplications which satisfy therequirements of 35 U.S.C. 371’’ with‘‘[n]ational stage processing forinternational applications entering thenational stage under 35 U.S.C. 371.’’ Asdiscussed previously, an internationalapplication does not satisfy therequirements of 35 U.S.C. 371 until theinventor’s oath or declaration has beenfiled. Thus, under the changes toinventor’s oath or declaration practicein this final rule, the Office mustprocess and conduct nationalexamination of internationalapplications before they satisfy therequirements of 35 U.S.C. 371.Section 1.421: Section 1.421(b) isamended to provide that ‘‘[a]lthough theUnited States Receiving Office willaccept international applications filedby any applicant who is a resident ornational of the U.S. for internationalprocessing, for the purposes of thedesignation of the U.S., an internationalapplication will be accepted by thePatent and Trademark Office for thenational stage only if the applicant isthe inventor or other person as providedin § 1.422 or § 1.424.’’ Section 1.421(b)continues to provide that joint inventorsmust jointly apply for an internationalapplication.Section 1.421 is amended to deletethe provision of former § 1.421(c) thatfor purposes of designations other thanthe U.S., international applications maybe filed by the assignee or owner. Thisprovision is deleted in view of thechanges to 35 U.S.C. 118 under the AIA.Sections 1.421(c), (d), and (e) containthe provisions of former §§ 1.421(d), (e),and (f), respectively.Section 1.421(f) contains theprovisions of former § 1.421(g), exceptfor the provision that the submission ofa separate power of attorney may beexcused upon the request of anotherapplicant where one or more inventorscannot be found or reached afterdiligent effort, and that such a requestmust be accompanied by a statementexplaining to the satisfaction of theDirector the lack of the signatureconcerned.Section 1.422: Section 1.422 isamended to provide that if an inventoris deceased or under legal incapacity,the legal representative of the inventormay be an applicant in an internationalapplication which designates the UnitedStates.Section 1.423: Section 1.423 isremoved and reserved as its provisionsare now in § 1.422.Section 1.424: Section 1.424 is addedto provide for an assignee, obligatedassignee, or person who otherwiseshows sufficient proprietary interest inthe matter as the applicant under 35U.S.C. 118 in an internationalapplication.Section 1.424(a) provides that aperson to whom the inventor hasassigned or is under an obligation toassign the invention may be anapplicant in an international applicationwhich designates the U.S. Section1.424(a) also provides that a person whootherwise shows sufficient proprietaryinterest in the matter may be anapplicant in an international applicationwhich designates the U.S. on proof ofthe pertinent facts and a showing thatsuch action is appropriate to preservethe rights of the parties.Section 1.424(b) provides that neitherany showing required under § 1.424(a)nor documentary evidence of ownershipor proprietary interest will be requiredor considered by the Office in theinternational stage, but such showingswill be required in the national stage inaccordance with the conditions andrequirements of § 1.46.Section 1.431: Section 1.431(b)(3)(iii)is amended to reference §§ 1.421, 1.422and 1.424 for consistency with theremoval of § 1.423 and the addition of§ 1.424.Section 1.491: Section 1.491(b) isamended by stating that an internationalapplication enters the national stagewhen the applicant has filed ‘‘thedocuments and fees required by 35U.S.C. 371(c)(1) and (c)(2) within theperiod set in § 1.495’’ rather than ‘‘thedocuments and fees required by 35U.S.C. 371(c) within the period set in§ 1.495.’’ 35 U.S.C. 371 provides that‘‘[a]fter an international application hasentered the national stage, no patentmay be granted or refused thereonbefore the expiration of the applicabletime limit under [PCT Article 28 or 41],except with the express consent of theapplicant.’’ See 35 U.S.C. 371(e). 35U.S.C. 371, however, does not definewhen an international applicationenters the national stage. The Officeformerly defined when an internationalapplication enters the national stage aswhen the applicant files the documentsand fees required by 35 U.S.C. 371(c)within the period set in § 1.495, whichmeans that an international applicationwould not enter the national stage untilthe applicant files the inventor’s oath ordeclaration. See 35 U.S.C. 371(c)(4). Asthe Office is changing inventor’s oath ordeclaration practice to allow applicantsto postpone filing the inventor’s oath ordeclaration until the application isotherwise in condition for allowance,the Office would be examininginternational applications prior tonational stage entry under the definitionVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00021 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6of national stage entry provided informer § 1.491(b).Section 1.491(c) is added to state thatan international application fulfills therequirements of 35 U.S.C. 371 when allapplicable requirements of 35 U.S.C.371, including commencement under 35U.S.C. 371(b) or (f), have been satisfied.As discussed previously, the fourteenmonthtime frame in 35 U.S.C.154(b)(1)(A)(i)(II) for issuing an Officeaction under 35 U.S.C. 132 or notice ofallowance under 35 U.S.C. 151 ismeasured from ‘‘the date on which aninternational application fulfilled therequirements of section 371 of this title’’(not the date of commencement ofnational stage processing or entry intothe national stage). An internationalapplication does not fulfill therequirements of 35 U.S.C. 371 until theapplicant files the inventor’s oath ordeclaration. See 35 U.S.C. 371(c)(4) andMPEP § 1893.03(b). Thus, § 1.491(c) isadded as a reminder to PCT applicantsthat an international application fulfillsthe requirements of 35 U.S.C. 371 onlywhen all applicable requirements of 35U.S.C. 371 have been satisfied.Section 1.492: Section 1.492(h) isamended to refer to ‘‘the inventor’s oathor declaration.’’ See previous discussionof § 1.16(f).Section 1.495: Section 1.495(a) isamended to remove the sentence thatstated ‘‘international applications forwhich the requirements of § 1.495 aretimely fulfilled will enter the nationalstage and obtain an examination as tothe patentability of the invention in theUnited States of America’’ as thesentence was confusing.Section 1.495(c)(1)(ii) is amended torefer to ‘‘the inventor’s oath ordeclaration.’’ See previous discussion of§ 1.16(f).Section 1.495(c)(2) provides that anotice under § 1.495(c)(1) will set a timeperiod within which applicant mustprovide any omitted translation, searchfee set forth in § 1.492(b), examinationfee set forth in § 1.492(c), and anyapplication size fee required by§ 1.492(j) in order to avoid abandonmentof the application. Section 1.495(c)(3)(discussed subsequently) sets forth thetime period for filing the inventor’s oathor declaration and provides theconditions under which an applicantmay postpone filing the inventor’s oathor declaration until the application isotherwise in condition for allowance.Section 1.495(c)(3) sets forth the timeperiod for filing the inventor’s oath ordeclaration and provides the conditionsunder which an applicant may postponefiling the inventor’s oath or declarationuntil the application is otherwise incondition for allowance. Section