A bill to carry into effect certain provisions of the Patent Cooperation Treaty, and for other purposes.
PL 94-131 (S.24), enacted 11/14/1975

PUBLIC LAW 94-13 l—NOV. 14, 1975 
89 STAT, 685 
Public Law 94-131 
94th Congress 
An Act 
To carry into effect certain provisions of the Patent Cooperation Treaty, and for 
Nov. 14, 1975 
other purposes. 
[S. 24]| 
Be it enacted hy the Senate and House of Representatives of the 
United States of America in Congress assembled^ That title 35, United Patent 
States Code, entitled "Patents", be amended by adding at the end cooperation, 
thereof a new part IV to read as follows: 
"PART IV.—PATENT COOPERATION TREATY 
"Chapter 35—DEFINITIONS 
"See. 
"351. Definitions. 
«§ 351. Definitions 
35 USC 351. 
"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, excluding chapter II thereof. 
"(b) The term 'Regulations', when capitalized, means the Regula-
tions under the treaty excluding part C thereof, 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 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 term 'International Searching Authority' means a 
national patent office or intergovernmental organization as appointed 
under the treaty which processes international applications as pre-
scribed by the treaty and the Regulations. 
"(h) The term 'International Bureau' means the international inter-
governmental 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. 
89 STAT. 686 
PUBLIC LAW 94-131—NOV. 14, 1975 
"Chapter 36.—INTERNATIONAL STAGE 
"Sec. 
"361. Receiving Office. 
"362. International Searching Authority. 
"363. International application designating the United States: Effect. 
"364. International stage: Procedure. 
"365. Right of priority; benefit of the filing date of a prior application. 
"366. Withdrawn international application. 
"367. Actions of other authorities: Review. 
"368. Secrecy of certain inventions; filing international applications in foreign 
countries. 
35 use 361. 
"§ 3M. Receiving Office 
"(a) The Patent Office shall act as a Receiving Office for interna-
tional 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 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 Office shall perform all acts connected with the 
discharge of duties required of a Receiving Office, including the collec-
tion of international fees and their transmittal to the International 
Bureau. 
" (c) International applications filed in the Patent Office shall be in 
the English language. 
"(d) The basic fee portion of the international fee, and the trans-
pose, p. 690. 
mittal and search fees prescribed under section 376(a) of this part, 
shall be paid on filing of an international application. Payment of 
designation fees may be made on filing and shall be made not later 
than one year from the priority date of the international application. 
35 use 362. 
"§362. International Searching Authority 
"The Patent Office may act as an International Searching Authority 
with respect to international applications in accordance with the terms 
and conditions of an agreement which may be concluded with the 
International Bureau. 
35 use 363. 
"§ 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 Office except as otherwise provided in section 102(e) of this 
Post, p. 691. 
title. 
35 use 364. 
'*§ 364. International stage: Procedure 
"(a) International applications shall be processed by the Patent 
Office when acting as a Receiving Office or International Searching 
Authority, or both, 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 Com-
missioner 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. 
35 use 365. 
"§365. Right of priority; benefit of the filing date of a prior 
application 
" (a) In accordance wdth the conditions and requirements of section 
35 use 119. 
119 of this title, a national application shall be entitled to the right of 
PUBLIC LAW 94^131—NOV. 14, 1975 
89 STAT. 687 
priority based on a prior filed international application which desig-
nated at least one country other than the United States. 
"(b) In accordance with the conditions and requirement of the j&rst 
paragraph of section 119 of this title and the treaty and the Regula- 35 U
S
C 119. 
tions, an international application designating the United States shall 
be entitled to the ri^ht 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 Post, p. 692. 
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 designat-
ing 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 ma^ 
require the filing in the Patent Office of a certified copy of such appli-
cation together with a translation thereof into the English language, 
if it was filed in another language. 
"§ 366. Withdrawn international application 
35 USC 366. 
"Subject to section 367 of this part, if an international application Infra. 
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 and 
shall be considered as not having been made. However, such interna-
tional 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. 
**§367. Actions of other authorities: Review 
35 USC 367. 
"(a) Where a Receiving Office other than the Patent 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. 
*
*
§ 368. Secrecy of certain inventions; filing international appli- 35 U
S
C 368. 
cations in foreign countries 
"(a) International applications filed in the Patent Office shall be 
subject to the provisions of chapter 17 of this title. 
35 USC 181 
"(b) In accordance with article 27(8) of the treaty, the filing of an «
^ «
e
y
-
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 desig-
nated in that international application. 
89 STAT. 688 
PUBLIC LAW 94-131—NOV. 14, 1975 
" (c) If a license to file in a foreign country is refused or if an inter-
national application is ordered to be kept secret and a permit refused, 
the Patent Office when acting as a Receiving Office or International 
Searching Authority, or both, may not disclose the contents of such 
application to anyone not authorized to receive such disclosure. 
"Chapter 37.—NATIONAL STAGE 
"Sec. 
"371. National stage: Commencement. 
"372. National stage: Requirements and procedure. 
"373. Improper applicant. 
"374. Publication of international application: Effect. 
"375. Patent issued on international application: Effect. 
"376. Fees. 
35 use 371. 
"§37L National Stage: Commencement 
"(a) Receipt from the International Bureau of copies of interna-
tional applications with amendments to the claims, if any, and inter-
national search reports is required in the case of all international 
applications designating the United States, except those filed in the 
Patent Office. 
"(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) of the treaty, at which time the applicant shall have 
complied with the applicable requirements specified in subsection (c) 
of this section. 
"(c) The applicant shall file in the Patent Office— 
"(1) the national fee prescribed under section 376(a) (4) of this 
part; 
" (2) a copy of the international application, unless not required 
under subsection (a) of this section or already received from the 
International Bureau, and a verified 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 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 
35 use 111 
authorized under chapter 11 of this title) complying with the 
etseq, 
requirements of section 115 of this title and with regulations 
35 use 115. 
prescribed for oaths or declarations of apj)licants. 
"(d) Failure to comply with any of the requirements of subsection 
(c) of this section, within the time limit provided by article 22 (1) 
or (2) of the treaty shall result in abandonment of the international 
application. 
''(e) After an international application has entered the national 
stage, no patent may be granted or refused thereon before the expira-
tion of the applicable time limit under article 28 of the treaty, except 
with the express consent of the applicant. The applicant may present 
amendments to the specification, claims, and drawings of the applica-
tion 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 
ill order for such purpose and the applicable re(juirements of subsec-
tion (c) of this section have been complied with. 
PUBLIC LAW 94-131—NOV. 14, 1975 
89 STAT. 689 
*
*
§ 372. National stage: Requirements and procedure 
35 USC 372. 
" (a) All questions of substance and, within the scope of the require-
ments 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 Office. 
"(b) In case of international applications designating but not orig-
inating 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 35 USC 121. 
the scope of the requirements of the treaty and the Regulations. 
"(c) Any claim not searched in the international stage in view of a 
holding, found to be justified by the Commissioner upon review, that 
the international application did not comply with the requirement for 
unity of invention under the treaty and the Regulations, shall be 
considered canceled, unless payment of a special fee is made by the 
applicant. Such special fee shall be paid with respect to each claim 
not searched in the international stage and shall be submitted not 
later than one month after a notice was sent to the applicant informing 
him that the said holding was deemed to be justified. The payment of 
the special fee shall not prevent the Commissioner from requiring 
that the international application be restricted to one of the inventions 
claimed therein under section 121 of this title, and within the scope of 
the requirements of the treaty and the Regulations. 
*
*
§ 373. Improper applicant 
35 USC 373. 
"An international application designating the United States, shall 
not be accepted by the Patent Office for the national stage if it was 
filed by anyone not qualified under chapter 11 of this title to be an 35 USC 111 
applicant for the purpose of filing a national application in the United et seq. 
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 Post, p. 692. 
a subsequently filed application, but may serve as the basis for a claim 
of the right of priority under section 119 of this title, if the United 35 USC 119. 
States was not the sole country designated in such international appli-
cation. 
"§ 374. Publication of international application: Effect 
35 U
S
C 374. 
"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. 
"§375. Patent issued on international application: Effect 
35 U
S
C 375. 
"(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, Post, p. 691. 
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. 
89 STAT. 690 
PUBLIC LAW 94-131—NOV. 14, 1975 
35 use 376. 
"§376. Fees 
"(a) The required payment of the international fee, which amount 
is specified in the Eegulations, shall be paid in United States cur-
rency. The Patent Office 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 national fee (see section 371 (c)); 
"(5) A special fee (to be paid when required; see section 372 
(c)); 
"(6) Such other fees as established by the Commissioner. 
"(b) The amounts of fees specified in subsection (a) of this sec-
tion, except the international fee, shall be prescribed by the Commis-
sioner. He may refund any sum paid by mistake or in excess of the 
• 
fees so specified, or if required under the treaty and the Eegulations. 
The Commissioner may also refund any part of the search fee, where 
he determines such refund to be warranted.". 
SEC. 2. Section 6 of title 35, United States Code, is amended by 
adding a paragraph (d) to read as follows: 
**§6. Duties of Commissioner 
* 
He 
He 
He 
* 
* 
* 
"(d) The Commissioner, under the direction of the Secretary of 
Commerce, may, with the concurrence of the Secretary of State, 
allocate funds appropriated to the Patent Office, to the Department 
of State for the purpose of payment of the share on the part of the 
United States to the working capital fund established under the Patent 
Cooperation Treaty. Contributions to cover the share on the part of 
the United States of any operating deficits of the International Bureau 
under the Patent Cooperation Treaty shall be included in the annual 
budget of the Patent Office and may be transferred by the Commis-
sioner, under the direction of the Secretary of Commerce, to the 
Department of State for the purpose of making payments thereof 
to the International Bureau.". 
SEC. 3. Item 1 of section 41 (a) of title 35, United States Code, is 
amended to read as follows: 
**§41. Patent fees 
" (a) The Commissioner shall charge the following fees: 
"1. On filing each application for an original patent, except in design 
cases, $65; in addition on filing or on presentation at any other time, 
$10 for each claim in independent form which is in excess of one, and 
$2, for each claim (whether independent or dependent) which is in 
excess of ten. For the purpose of computing fees, a multiple dependent 
Post, p. 691. 
claim as referred to in section 112 of this title or any claim depending 
therefrom shall be considered as separate dependent claims in 
accordance with the number of claims to which reference is made. 
Errors in payment of the additional fees may be rectified in 
accordance with regulations of the Commissioner.". 
SEC. 4. Section 42 of title 35, United States Code, is amended to read 
as follows: 
"§ 42. Payment of patent fees; return of excess amounts 
"All patent fees shall be paid to the Commissioner who, except as 
Ante, p. 686. 
provided in sections 361(b) and 376(b) of this title, shall deposit the 
"
^
"
Z
"
"
"
- 
sHme in the Treasury of the United States in such manner as the 
Secretary of the Treasury directs, and the Commissioner may refund 
any sum paid by mistake or in excess of the fee required by law.". 
PUBLIC LAW 94-131—NOV. 14, 1975 
89 STAT. 691 
SEC. 5. Paragraph (e) of section 102 of title 36, United States Code, 
is amended to read as follows: 
"§ 102. Conditions for patentability; novelty and loss of right to 
patent 
t 
Its 
* 
* 
* 
* 
* 
"(e) the invention was described in a patent granted on an 
application for patent by another filed in the United States before 
the invention thereof by the applicant for patent, or on an inter-
national application by another who has fulfilled the requirements 
of paragraphs (1), (2), and (4) of section 371(c) of this title Ante, p. 688. 
before the invention thereof by the applicant for patent, or". 
SEC. 6. The first sentence of section 104 of title 35, United State Code, 
is amended to read as follows: 
*
*
§ 104. Invention made abroad 
"In proceedings in the Patent Office and in the courts, an applicant 
for a patent, or a patentee, may not establish a date of invention by 
reference to knowledge or use thereof, or other activity with respect 
thereto, in a foreign country, except as provided in sections 119 and 
365 of this title.". 
' 
35 USC119, 
SEC. 7. The second sentence of the second paragraph of section 112 ^»te, p. 686. 
of title 35, United States Code, is amended to read as follows: 
"§112. Specification 
* 
))> 
« 
9|e 
* 
* 
• 
"A claim may be written in independent or, if the nature of the 
case admits, in dependent or multiple dependent form. 
"Subject to the following paragraph, a claim in dependent form 
shall contain a reference to a claim previously set forth and then 
specify a further limitation of the subject matter claimed. A claim in 
dependent form shall be construed to incorporate by reference all the 
limitations of the claim to which it refers. 
"A claim in multiple dependent form shall contain a reference, in 
the alternative only, to more than one claim previously set forth and 
then specify a further limitation of the subject matter claimed. A multi-
ple dependent claim shall not serve as a basis for any other multiple 
dependent claim. A multiple dependent claim shall be construed to 
incorporate by reference all the limitations of the particular claim 
in relation to which it is being considered.". 
SEC. 8. Section 113 of title 35, United States Code, is amended to 
read as follows: 
"§113. Drawings 
"The applicant shall furnish a drawing where necessary for the 
understanding of the subject matter sought to be patented. When the 
nature of such subject matter admits of illustration by a drawing and 
the applicant has not furnished such a drawing, the Commissioner 
may require its submission within a time period of not less than two 
months from the sending of a notice thereof. Drawings submitted after 
the filing date of the application may not be used (i) to overcome any 
insufficiency of the specification due to lack of an enabling disclosure 
oi otherwise inadequate disclosure therein, or (ii) to supplement the 
original disclosure thereof for the purpose of interpretation of the 
scope of any claim.". 
SEC. 9. Section 120 of title 35, United States Code, is amended to 
read as follows: 
89 STAT. 692 
PUBLIC LAW 94-131—NOV. 14, 1975 
"§120. BenejSt of earlier filing date in the United States 
"An application for patent for an invention disclosed in the manner 
Ante, p. 691. 
provided by the first paragraph of section 112 of this title in an appli-
cation previously filed in the United States, or as provided by section 
Ante, p. 686. 
363 of this title, by the same inventor shall have the same effect, as to 
such invention, as though filed on the date of the prior application, if 
filed before the patenting or abandonment of or termination of pro-
ceedings on the first application or on an application similarly entitled 
to the benefit of the filing date of the first application and if it contains 
or is amended to contain a specific reference to the earlier filed 
application.". 
SEC. 10. The first paragraph of section 282 of title 35, United States 
Code, is amended to read as follows: 
"§282. Presumption of validity; defenses 
"A patent shall be presumed valid. Each claim of a patent (whether 
in independent, dependent, or multiple dependent form) shall be pre-
sumed valid independently of the validity of other claims; dependent 
or multiple dependent claims shall be presumed valid even though 
dependent upon an invalid claim. The burden of establishing invalid-
ity of a patent or any claim thereof shall rest on the party asserting 
such invalidity.". 
Effective dates. 
SEC. 11. (a) Section 1 of this Act shall come into force on the same 
35 use 351 note, day as the entry into force of the Patent Cooperation Treaty with 
respect to the United States. It shall apply to international and national 
applications filed on and after this effective date, even though entitled 
to the benefit of an earlier filing date, and to patents issued on such 
applications. 
(b) Sections 2 to 10 of this Act shall take effect on the same day as 
section 1 of this Act and shall apply to all applications for patent actu-
ally filed in the United States on and after this effective date, as well 
as to international applications where applicable. 
(c) Applications for patent on file in the Patent Office on the effec-
tive date of this Act, and patents issued on such applications, shall be 
governed by the provisions of title 35, United States Code, in effect 
immediately prior to the effective date of this Act. 
Approved November 14, 1975. 
LEGISLATIVE HISTORY: 
HOUSE REPORT No. 94-592 (Comm. on the Judiciary). 
SENATE REPORT No. 94-215 (Comm. on the Judiciary). 
CONGRESSIONAL RECORD, Vol. 121 (1975): 
June 21, considered and passed Senate. 
Nov. 3, considered and passed House.