1893.01 Commencement and Entry [R-07.2015]

Created On
byChhabra Law Firm

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);
    • (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 requirement 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, unless it be shown to the satisfaction of the Director 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 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.

37 CFR 1.491 National stage commencement, entry, and fulfillment.

[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 on or after September 16, 2012]

37 CFR 1.491 (pre-AIA) National stage commencement and entry.

[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 prior to September 16, 2012]

Subject to 35 U.S.C. 371(f), commencement of the national stage occurs upon expiration of the applicable time limit under PCT Article 22(1) or (2), or under PCT Article 39(1)(a). See 35 U.S.C. 371(b) and 37 CFR 1.491(a). PCT Articles 22(1), 22(2), and 39(1)(a) provide for a time limit of not later than the expiration of 30 months from the priority date. Thus, in the absence of an express request for early processing of an international application under 35 U.S.C. 371(f) and compliance with the conditions provided therein, the U.S. national stage will commence upon expiration of 30 months from the priority date of the international application. Pursuant to 35 U.S.C. 371(f), the national stage may commence earlier than 30 months from the priority date, provided applicant makes an express request for early processing and has complied with the applicable requirements under 35 U.S.C. 371(c).

Entry into the national stage occurs upon completion of certain acts, as provided in 37 CFR 1.491(b). For international applications having an international filing date before September 16, 2012, the international application enters the national stage when the applicant has filed the documents and fees required by 35 U.S.C. 371(c) within the period set in 37 CFR 1.495. For international applications having an international filing date on or after September 16, 2012, the international application enters the national stage when the applicant has filed the documents and fees required by 35 U.S.C. 371(c)(1) and (2) within the period set in 37 CFR 1.495. Thus, for international applications having an international filing date on or after September 16, 2012, submission of the oath or declaration of the inventor under 35 U.S.C. 371(c)(4) is not required to enter the U.S. national phase.