United States Code

commencement of the suit. (As amended Jan. 2, 1975, Pub. L. 93–596, § 1, 88 Stat. 1949.)

AMENDMENTS

1975-Pub. L. 93-596 substituted "Patent and Trademark Office" for "Patent Office".

EFFECTIVE DATE OF 1975 AMENDMENT Amendment by Pub. L. 93–596 effective Jan. 2, 1975, see section 4 of Pub. L. 93-596, set out as a note under section 1111 of Title 15, Commerce and Trade.

§ 293. Nonresident patentee; service and notice.

Every patentee not residing in the United States may file in the Patent and Trademark Office a written designation stating the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the patent or rights thereunder. If the person designated cannot be found at the address given in the last designation, or if no person has been designated, the United States District Court for the District of Columbia shall have jurisdiction and summons shall be served by publication or otherwise as the court directs. The court shall have the same jurisdiction to take any action respecting the patent or rights thereunder that it would have if the patentee were personally within the jurisdiction of the court. (As amended Jan. 2, 1975, Pub. L. 93-596, § 1, 88 Stat. 1949.)

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 Regulations 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.

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

EFFECTIVE DATE

Section 11 of Pub. L. 94-131 provided that:

"(a) Section 1 of this Act [enacting this part] shall come into force on the same 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 [enacting section 6(d) and amending sections 41(a) 1, 42, 102(e), 104, 112, 113, 120, and 282 of this title] shall take effect on the same day as section 1 of this Act [enacting this part] and shall apply to all applications for patent actually 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 effective date of this Act, and patents issued on such applications, shall be governed by the provisions of title 35, United States Code [this title], in effect immediately prior to the effective date of this Act."

Sec.

Chapter 36.-INTERNATIONAL STAGE

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.

§ 361. Receiving Office.

(a) The Patent 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 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 collection of interna

tional fees and their transmittal to the International Bureau.

(d) The basic fee portion of the international fee, and the transmittal 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. (Added Pub. L. 94-131, § 1, Nov. 14, 1975, 89 Stat. 686.)

EFFECTIVE DATE

Section effective on day of entry into force of Patent Cooperation Treaty with respect to United States, see section 11 of Pub. L. 94-131, set out as a note under section 351 of this title.

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 42, 376 of this title.

§ 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. (Added Pub. L. 94131, § 1, Nov. 14, 1975, 89 Stat. 686.)

§ 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 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 Pub. L. 94-131, § 1, Nov. 14, 1975, 89 Stat. 686.)

EFFECTIVE DATE

Section effective on day of entry into force of Patent Cooperation Treaty with respect to United States, see section 11 of Pub. L. 94-131, set out as a note under section 351 of this title.

§ 365. Right of priority; benefit of the filing date of a prior application.

(a) In accordance with the conditions and requirements 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 the first paragraph of section 119 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 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 Pub. L. 94–131, § 1, Nov. 14, 1975, 89 Stat. 686.)

EFFECTIVE Date

Section effective on day of entry into force of Patent Cooperation Treaty with respect to United States, see section 11 of Pub. L. 94-131, set out as a note under section 351 of this title.

SECTION REFERRED TO IN OTHER SECTIONS This section is referred to in sections 104, 366 of this title.

§ 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 and shall be considered as not having been made. However, such 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 Pub. L. 94-131, § 1, Nov. 14, 1975, 89 Stat. 687.)

EFFECTIVE DATE

Section effective on day of entry into force of Patent Cooperation Treaty with respect to United States, see section 11 of Pub. L. 94-131, set out as a note under section 351 of this title.

§ 367. Actions of other authorities: Review.

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

EFFECTIVE DATE

Section effective on day of entry into force of Patent Cooperation Treaty with respect to United States, see section 11 of Pub. L. 94-131, set out as a note under section 351 of this title.

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in section 366 of this title. § 368. Secrecy of certain inventions; filing international applications in foreign countries.

(a) International applications filed in the Patent 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 country is refused or if an international 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. (Added Pub. L. 94-131, § 1, Nov. 14, 1975, 89 Stat. 687.)

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.

(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 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.

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

EFFECTIVE Date

Section effective on day of entry into force of Patent Cooperation Treaty with respect to United States, see section 11 of Pub. L. 94-131, set out as a note under section 351 of this title.

SECTION REFERRED TO IN OTHER SECTIONS This section is referred to in sections 102, 366, 376 of this title.

§ 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 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.

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

EFFECTIVE DATE

Section effective on day of entry into force of Patent Cooperation Treaty with respect to United States, see section 11 of Pub. L. 94-131, set out as a note under section 351 of this title.

SECTION REFERRED TO IN OTHER SECTIONS This section is referred to in section 376 of this title.

§ 373. Improper applicant.

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 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 section 119 of this title, if the United States was not the sole country designated in such international application. (Added Pub. L. 94-131, § 1, Nov. 14, 1975, 89 Stat. 689.)

EFFECTIVE DATE

Section effective on day of entry into force of Patent Cooperation Treaty with respect to United States, see section 11 of Pub. L. 94-131, set out as a note under section 351 of this title.

§ 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 Pub. L. 94-131, § 1, Nov. 14, 1975, 89 Stat. 689.)

EFFECTIVE DATE

Section effective on day of entry into force of Patent Cooperation Treaty with respect to United States, see section 11 of Pub. L. 94-131, set out as a note under section 351 of this title.

§ 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 Pub. L. 94-131, § 1, Nov. 14, 1975, 89 Stat. 689.)

EFFECTIVE DATE

Section effective on day of entry into force of Patent Cooperation Treaty with respect to United States, see section 11 of Pub. L. 94-131, set out as a note under section 351 of this title.

§ 376. Fees.

(a) The required payment of the international fee, which amount is specified in the Regulations, shall be paid in United States currency. 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 section, except the international 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, where he determines such refund to be warranted. (Added Pub. L. 94-131, § 1, Nov. 14, 1975, 89 Stat. 690.)

EFFECTIVE DATE

Section effective on day of entry into force of Patent Cooperation Treaty with respect to United States, see section 11 of Pub. L. 94-131, set out as a note under section 351 of this title.

SECTION REFERRED TO IN OTHER SECTIONS This section is referred to in sections 42, 361, 371 of this

title.

TITLE 35.-APPENDIX

RULES OF THE UNITED STATES COURT OF CUSTOMS AND PATENT APPEALS

Rule

5.5 Agreed Statement.

5.6 Printing of Transcript.

(a) Filing of Transcript-Number of Copies-Composition-Service-Multiple Appeals.

(b) Determination of Contents.

(d) Contents.

(e) Omission of Relevant Papers.

(f) Consolidation of Appeals in Single Transcript.

(g) Submission on Record Without Transcript.

(h) Translations.

5.7 Visual Aids.

(a) Used Below.

(b) Not Used Below.

5.8 Appearance of Printed Transcripts, Briefs, Motions

and Other Papers.

(a) In General.

(b) Cover-Color.

(d) Page Size-Patent and Trademark Office.

(e) Motions etc.

(f) Failure to Conform.

5.9 Briefs-Content.

(a) Cover-Content.

(b) Appellant's Brief.

(d) Reply Brief.

(e) Citations.

(f) Length of Brief.

(g) Cross-Appeals.

5.10 Filing and Service of Briefs.

(a) Time to File.

(b) Number of Copies.

(d) Consequences of Failure to File Briefs.

5.11 Brief of Amicus Curiae.

(a) Filing.

(b) Motion for Leave. (c) Content.

5.12 Calendaring and Disposition of Cases.

(a) Notice of Argument.

(b) Expedited Hearing.
(c) Disposition on Briefs.

(d) Disposition on the Record.

(e) Cross-Appeals.

(f) Frivolous Appeals.

(g) Opinions-Publications.

5.13 Oral Argument.

(a) Number of Counsel.

(b) Order of Argument.

(d) Additional Time.

(e) Amicus Curiae Argument.

(f) Non Appearance.

(g) In Camera Proceedings

(h) Opening.

5.14 Form of Typewritten Papers. 5.15 Fees.

6. DISPOSITION OF CAUSES

6.1 Petition for Rehearing.

6.2 Mandates.

(a) When Issued.
(b) Stay.

6.3 Voluntary Dismissal.

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