justicedao/patent-legal-corpus huggingface dataset:
37 CFR 1.434 — Rules of Practice in Patent Cases
Current through: 2024-07-01

The request.

§ 1.434 The request. (a) The request shall be made on a standardized form (PCT Rules 3 and 4). Copies of printed Request forms are available from the United States Patent and Trademark Office. Letters requesting printed forms should be marked “Mail Stop PCT.” (b) The Check List portion of the Request form should indicate each document accompanying the international application on filing. (c) All information, for example, addresses, names of States and dates, shall be indicated in the Request as required by PCT Rule 4 and Administrative Instructions 110 and 201. (d) For the purposes of the designation of the United States of America, an international application shall include: (1) The name of the inventor; and (2) A reference to any prior-filed national application or international application designating the United States of America, if the benefit of the filing date for the prior-filed application is to be claimed. (e) An international application may also include in the Request a declaration of the inventors as provided for in PCT Rule 4.17(iv). [43 FR 20466, May 11, 1978, as amended at 58 FR 4345, Jan. 14, 1993; 66 FR 16006, Mar. 22, 2001; 66 FR 67096, Dec. 28, 2001; 68 FR 14337, Mar. 25, 2003; 68 FR 59887, Oct. 20, 2003]
37 CFR 1.435 — Rules of Practice in Patent Cases
Current through: 2024-07-01

The description.

§ 1.435 The description. (a) The application must meet the requirements as to the content and form of the description set forth in PCT Rules 5, 9, 10, and 11 and sections 204 and 208 of the Administrative Instructions. (b) In international applications designating the United States the description must contain upon filing an indication of the best mode contemplated by the inventor for carrying out the claimed invention. [43 FR 20466, May 11, 1978, as amended at 63 FR 29618, June 1, 1998]
37 CFR 1.436 — Rules of Practice in Patent Cases
Current through: 2024-07-01

The claims.

§ 1.436 The claims. The requirements as to the content and format of claims are set forth in PCT Art. 6 and PCT Rules 6, 9, 10 and 11 and shall be adhered to. The number of the claims shall be reasonable, considering the nature of the invention claimed.
37 CFR 1.437 — Rules of Practice in Patent Cases
Current through: 2024-07-01

The drawings.

§ 1.437 The drawings. (a) Drawings are required when they are necessary for the understanding of the invention (PCT Art. 7). (b) The physical requirements for drawings are set forth in PCT Rule 11 and shall be adhered to. [72 FR 51563, Sept. 10, 2007]
37 CFR 1.438 — Rules of Practice in Patent Cases
Current through: 2024-07-01

The abstract.

§ 1.438 The abstract. (a) Requirements as to the content and form of the abstract are set forth in PCT Rule 8, and shall be adhered to. (b) Lack of an abstract upon filing of an international application will not affect the granting of a filing date. However, failure to furnish an abstract within one month from the date of the notification by the Receiving Office will result in the international application being declared withdrawn.
37 CFR 1.43 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Application for patent by a legal representative of a deceased or legally incapacitated inventor.

§ 1.43 Application for patent by a legal representative of a deceased or legally incapacitated inventor. If an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent on behalf of the inventor. If an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention. See § 1.64 concerning the execution of a substitute statement by a legal representative in lieu of an oath or declaration. [77 FR 48815, Aug. 14, 2012]
37 CFR 1.446 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Refund of international application filing and processing fees.

§ 1.446 Refund of international application filing and processing fees. (a) Money paid for international application fees, where paid by actual mistake or in excess, such as a payment not required by law or treaty and its regulations, may be refunded. A mere change of purpose after the payment of a fee will not entitle a party to a refund of such fee. The Office will not refund amounts of twenty-five dollars or less unless a refund is specifically requested and will not notify the payor of such amounts. If the payor or party requesting a refund does not provide the banking information necessary for making refunds by electronic funds transfer, the Office may use the banking information provided on the payment instrument to make any refund by electronic funds transfer. (b) Any request for refund under paragraph (a) of this section must be filed within two years from the date the fee was paid. If the Office charges a deposit account by an amount other than an amount specifically indicated in an authorization under § 1.25(b), any request for refund based upon such charge must be filed within two years from the date of the deposit account statement indicating such charge and include a copy of that deposit account statement. The time periods set forth in this paragraph are not extendable. (c) Refund of the supplemental search fees will be made if such refund is determined to be warranted by the Director or the Director's designee acting under PCT Rule 40.2(c). (d) The international and search fees will be refunded if no international filing date is accorded or if the application is withdrawn before transmittal of the record copy to the International Bureau (PCT Rules 15.6 and 16.2). The search fee will be refunded if the application is withdrawn before transmittal of the search copy to the International Searching Authority. The transmittal fee will not be refunded. (e) The handling fee (§ 1.482(b)) will be refunded (PCT Rule 57.6) only if: (1) The Demand is withdrawn before the Demand has been sent by the International Preliminary Examining Authority to the International Bureau, or (2) The Demand is considered not to have been submitted (PCT Rule 54.4(a)). (35 U.S.C. 6; 15 U.S.C. 1113, 1123) [43 FR 20466, May 11, 1978, as amended at 50 FR 9384, Mar. 7, 1985; 50 FR 31826, Aug. 6, 1985; 58 FR 4345, Jan. 14, 1993; 65 FR 54677, Sept. 8, 2000]
37 CFR 1.451 — Rules of Practice in Patent Cases
Current through: 2024-07-01

The priority claim and priority document in an international application.

§ 1.451 The priority claim and priority document in an international application. (a) The claim for priority must, subject to paragraph (d) of this section, be made on the Request (PCT Rule 4.10) in a manner complying with sections 110 and 115 of the Administrative Instructions. (b) Whenever the priority of an earlier United States national application or international application filed with the United States Receiving Office is claimed in an international application, the applicant may request in the Request or in a letter of transmittal accompanying the international application upon filing with the United States Receiving Office or in a separate letter filed in the United States Receiving Office not later than 16 months after the priority date, that the United States Patent and Trademark Office prepare a certified copy of the prior application for transmittal to the International Bureau (PCT Article 8 and PCT Rule 17). The fee for preparing a certified copy is set forth in § 1.19(b)(1). (c) If a certified copy of the priority document is not submitted together with the international application on filing, or, if the priority application was filed in the United States and a request and appropriate payment for preparation of such a certified copy do not accompany the international application on filing or are not filed within 16 months of the priority date, the certified copy of the priority document must be furnished by the applicant to the International Bureau or to the United States Receiving Office within the time limit specified in PCT Rule 17.1(a). (d) The applicant may correct or add a priority claim in accordance with PCT Rule 26bis.1. (35 U.S.C. 6; 15 U.S.C. 1113, 1123) [43 FR 20466, May 11, 1978, as amended at 50 FR 9384, Mar. 7, 1985; 50 FR 11366, Mar. 21, 1985; 54 FR 6903, Feb. 15, 1989; 58 FR 4345, Jan. 14, 1993; 63 FR 29619, June 1, 1998; 66 FR 16006, Mar. 22, 2001]
37 CFR 1.452 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Restoration of right of priority.

§ 1.452 Restoration of right of priority. (a) If the international application has an international filing date which is later than the expiration of the priority period as defined by PCT Rule 2.4 but within two months from the expiration of the priority period, the right of priority in the international application may be restored upon request if the delay in filing the international application within the priority period was unintentional. (b) A request to restore the right of priority in an international application under paragraph (a) of this section must be filed not later than two months from the expiration of the priority period and must include: (1) A notice under PCT Rule 26 bis. 1(a) adding the priority claim, if the priority claim in respect of the earlier application is not contained in the international application; (2) The petition fee as set forth in § 1.17(m); and (3) A statement that the delay in filing the international application within the priority period was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. (c) If the applicant makes a request for early publication under PCT Article 21(2)(b), any requirement under paragraph (b) of this section filed after the technical preparations for international publication have been completed by the International Bureau shall be considered as not having been submitted in time. [72 FR 51563, Sept. 10, 2007, as amended at 78 FR 62407, Oct. 21, 2013]
37 CFR 1.453 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Transmittal of documents relating to earlier search or classification.

§ 1.453 Transmittal of documents relating to earlier search or classification. (a) Subject to paragraph (c) of this section, where an applicant has requested in an international application filed with the United States Receiving Office pursuant to PCT Rule 4.12 that an International Searching Authority take into account the results of an earlier search, the United States Receiving Office shall prepare and transmit to the International Searching Authority, as applicable, a copy of the results of the earlier search and any earlier classification as provided under PCT Rule 23 bis. 1. (b) Subject to paragraph (c) of this section, where an international application filed with the United States Receiving Office claims the priority of an earlier application filed with the USPTO in which the USPTO has carried out an earlier search or has classified such earlier application, the United States Receiving Office shall prepare and transmit to the International Searching Authority a copy of the results of any such earlier search and earlier classification as provided under PCT Rule 23 bis. 2. (c) The United States Receiving Office will not prepare a copy of the results of an earlier search or earlier classification referred to in paragraphs (a) and (b) of this section for transmittal to an International Searching Authority from an application preserved in confidence (§ 1.14) unless the international application contains written authority granting the International Searching Authority access to such results. Written authority provided under this paragraph must be signed by: (1) An applicant in the international application who is also an applicant in the application preserved in confidence; or (2) A person set forth in § 1.14(c) permitted to grant access to the application preserved in confidence. [82 FR 24252, May 26, 2017]
37 CFR 1.455 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Representation in international applications.

§ 1.455 Representation in international applications. (a) Applicants of international applications may be represented by attorneys or agents registered to practice before the United States Patent and Trademark Office or by an applicant appointed as a common representative (PCT Art. 49, Rules 4.8 and 90 and § 11.9). If applicants have not appointed an attorney or agent or one of the applicants to represent them, and there is more than one applicant, the applicant first named in the request and who is entitled to file in the U.S. Receiving Office shall be considered to be the common representative of all the applicants. An attorney or agent having the right to practice before a national office with which an international application is filed and for which the United States is an International Searching Authority or International Preliminary Examining Authority may be appointed to represent the applicants in the international application before that authority. An attorney or agent may appoint an associate attorney or agent who shall also then be of record (PCT Rule 90.1(d)). The appointment of an attorney or agent, or of a common representative, revokes any earlier appointment unless otherwise indicated (PCT Rule 90.6 (b) and (c)). (b) Appointment of an agent, attorney or common representative (PCT Rule 4.8) must be effected either in the Request form, signed by applicant, in the Demand form, signed by applicant, or in a separate power of attorney submitted either to the United States Receiving Office or to the International Bureau. (c) Powers of attorney and revocations thereof should be submitted to the United States Receiving Office until the issuance of the international search report. (d) The addressee for correspondence will be as indicated in section 108 of the Administrative Instructions. [43 FR 20466, May 11, 1978, as amended at 50 FR 5171, Feb. 6, 1985; 58 FR 4345, Jan. 14, 1993; 68 FR 59888, Oct. 20, 2003; 69 FR 35452, June 24, 2004]
37 CFR 1.45 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Application for patent by joint inventors.

§ 1.45 Application for patent by joint inventors. (a) Joint inventors must apply for a patent jointly, and each must make an inventor's oath or declaration as required by § 1.63, except as provided for in § 1.64. If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the other joint inventor or inventors may make the application for patent on behalf of themselves and the omitted inventor. See § 1.64 concerning the execution of a substitute statement by the other joint inventor or inventors in lieu of an oath or declaration. (b) Inventors may apply for a patent jointly even though: (1) They did not physically work together or at the same time; (2) Each inventor did not make the same type or amount of contribution; or (3) Each inventor did not make a contribution to the subject matter of every claim of the application. (c) If multiple inventors are named in a nonprovisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter of at least one claim of the application and the application will be considered to be a joint application under 35 U.S.C. 116. If multiple inventors are named in a provisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter disclosed in the provisional application and the provisional application will be considered to be a joint application under 35 U.S.C. 116. [77 FR 48815, Aug. 14, 2012]
37 CFR 1.461 — [Reserved] Rules of Practice in Patent Cases
Current through: 2024-07-01

Procedures for transmittal of record copy to the International Bureau.

§ 1.461 Procedures for transmittal of record copy to the International Bureau. (a) Transmittal of the record copy of the international application to the International Bureau shall be made by the United States Receiving Office or as provided by PCT Rule 19.4. (b) [Reserved] (c) No copy of an international application may be transmitted to the International Bureau, a foreign Designated Office, or other foreign authority by the United States Receiving Office or the applicant, unless the applicable requirements of part 5 of this chapter have been satisfied. [43 FR 20466, May 11, 1978, as amended at 50 FR 9384, Mar. 7, 1985; 63 FR 29619, June 1, 1998]
37 CFR 1.465 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Timing of application processing based on the priority date.

§ 1.465 Timing of application processing based on the priority date. (a) For the purpose of computing time limits under the Treaty, the priority date shall be defined as in PCT Art. 2(xi). (b) When a claimed priority date is corrected under PCT Rule 26 bis. 1(a), or a priority claim is added under PCT Rule 26 bis. 1(a), withdrawn under PCT Rule 90 bis. 3, or considered not to have been made under PCT Rule 26 bis. 2, the priority date for the purposes of computing any non-expired time limits will be the filing date of the earliest remaining priority claim under PCT Article 8 of the international application, or if none, the international filing date. (c) When corrections under PCT Art. 11(2), Art. 14(2) or PCT Rule 20.2(a) (i) or (iii) are timely submitted, and the date of receipt of such corrections falls later than one year from the claimed priority date or dates, the Receiving Office shall proceed under PCT Rule 26bis.2. [43 FR 20466, May 11, 1978, as amended at 63 FR 29619, June 1, 1998; 72 FR 51564, Sept. 10, 2007]
37 CFR 1.471 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Corrections and amendments during international processing.

§ 1.471 Corrections and amendments during international processing. (a) Except as otherwise provided in this paragraph, all corrections submitted to the United States Receiving Office or United States International Searching Authority must be in English, in the form of replacement sheets in compliance with PCT Rules 10 and 11, and accompanied by a letter that draws attention to the differences between the replaced sheets and the replacement sheets. Replacement sheets are not required for the deletion of lines of text, the correction of simple typographical errors, and one addition or change of not more than five words per sheet. These changes may be stated in a letter and, if appropriate, the United States Receiving Office will make the deletion or transfer the correction to the international application, provided that such corrections do not adversely affect the clarity and direct reproducibility of the application (PCT Rule 26.4). Amendments that do not comply with PCT Rules 10 and 11.1 to 11.13 may not be entered. (b) Amendments of claims submitted to the International Bureau shall be as prescribed by PCT Rule 46. (c) Corrections or additions to the Request of any declarations under PCT Rule 4.17 should be submitted to the International Bureau as prescribed by PCT Rule 26 ter. [43 FR 20466, May 11, 1978, as amended at 63 FR 29619, June 1, 1998; 66 FR 16006, Mar. 22, 2001]
37 CFR 1.472 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Changes in person, name, or address of applicants and inventors.

§ 1.472 Changes in person, name, or address of applicants and inventors. All requests for a change in person, name or address of applicants and inventor be sent to the United States Receiving Office until the time of issuance of the international search report. Thereafter requests for such changes should be submitted to the International Bureau. [43 FR 20466, May 11, 1978. Redesignated at 52 FR 20047, May 28, 1987]
37 CFR 1.475 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Unity of invention before the International Searching Authority, the International Preliminary Examining Authority and during the national stage.

§ 1.475 Unity of invention before the International Searching Authority, the International Preliminary Examining Authority and during the national stage. (a) An international and a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in an application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art. (b) An international or a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories: (1) A product and a process specially adapted for the manufacture of said product; or (2) A product and a process of use of said product; or (3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or (4) A process and an apparatus or means specifically designed for carrying out the said process; or (5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process. (c) If an application contains claims to more or less than one of the combinations of categories of invention set forth in paragraph (b) of this section, unity of invention might not be present. (d) If multiple products, processes of manufacture or uses are claimed, the first invention of the category first mentioned in the claims of the application and the first recited invention of each of the other categories related thereto will be considered as the main invention in the claims, see PCT Article 17(3)(a) and § 1.476(c). (e) The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. [58 FR 4345, Jan. 14, 1993]
37 CFR 1.476 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Determination of unity of invention before the International Searching Authority.

§ 1.476 Determination of unity of invention before the International Searching Authority. (a) Before establishing the international search report, the International Searching Authority will determine whether the international application complies with the requirement of unity of invention as set forth in § 1.475. (b) If the International Searching Authority considers that the international application does not comply with the requirement of unity of invention, it shall inform the applicant accordingly and invite the payment of additional fees (note § 1.445 and PCT Art. 17(3)(a) and PCT Rule 40). The applicant will be given a time period in accordance with PCT Rule 40.3 to pay the additional fees due. (c) In the case of non-compliance with unity of invention and where no additional fees are paid, the international search will be performed on the invention first mentioned (“main invention”) in the claims. (d) Lack of unity of invention may be directly evident before considering the claims in relation to any prior art, or after taking the prior art into consideration, as where a document discovered during the search shows the invention claimed in a generic or linking claim lacks novelty or is clearly obvious, leaving two or more claims joined thereby without a common inventive concept. In such a case the International Searching Authority may raise the objection of lack of unity of invention. [43 FR 20466, May 11, 1978. Redesignated and amended at 52 FR 20048, May 28, 1987; 58 FR 4346, Jan. 14, 1993]