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1893.02 MANUAL OF PATENT EXAMIN1NG PROCEDURE
Applicants entering the national stage in the U.S.
are required to file an oath or declaration of the inventor
in accordance with 37 CPR 1.497(a) and (b). If the
basic national fee has been paid by the expiration of
20 or 30 months from the priority date as appropriate,
but the required oath or declaration has not been filed,
the Office will send applicant a notice of Missing
Requirements setting a time period to correct any
missing or defective requirements. The time period is
21 months or 31 months from the priority date, as
appropriate, or 1 month from the date of the notice,
whichever expires later. The time period is subject to
the provisions of 37 CPR 1.136(a). The oath or declaration
must comply with the requirements of
35 U.S.C. 115 and with the regulations prescribed for
oaths and declarations. See especially 37 CPR
1.497(a) and (b). Purther, pursuant to 37 CPR
1.497(c), to avoid the need to submit a supplemental
oath or declaration, the oath or declaration must comply
with 37 CPR 1.63.
Ifan inventor refuses to execute the oath or declaration
or is unavailable, applicant must file an oath or
declaration and a petition in accordance with 37 CPR
1.47. Similarly, where an inventor is deceased or
legally incapacitated, an oath or declaration in accordance
with the provisions of 37 CPR 1.42 or 1.43
must be provided. To avoid abandonment the oath or
declaration and petition (under 37 CPR 1.42, 1.43
and/or 1.47, as appropriate) must be filed either
before expiration of 20 or 30 months from the priority
date, as appropriate, or, where a notification of deficiency
of the oath/declaration has been mailed, within
the time for reply to that notification.
The Office no longer requires proof of authority of
the legal representative of a deceased or legally incapacitated
inventor. See MPEP § 409.01(b).
1893.02 Abandonment
If the requirements of 35 U.S.C. 371(c) are not
complied with by the time period set in 37 CPR
1.494(b) and (c) or 37 CPR 1.495(b) and (c), as appropriate,
the application is considered to be abandoned,
see 37 CPR 1.494(g) and 37 CFR 1.495(h).
Examinersandapplicants should be aware that
sometimes papersfiled for the national stage are deficient
and abandonment results. Por example, if the fee
submitted does not include at least the amount of the
August2001 1800-140
basic national fee that is due, the application becomes
abandoned.
Applicant may file a petition to revive an abandoned
application in accordance with .the provisions
of37 CPR 1.137. See MPEP § 711.03(c).
1893.03 Prosecution of U.S. National
Stage Applications Before
the Examiner
37 CFR 1.496. Examination of international applications
in the national stage.
(a) Intemational applications which have complied with the
requirements of35 U.S.C. 371(c) will betaken up for action based
on the date on which such requirements were met. However,
unlessanexpressrequest forearlyprocessing hasbeenfiled under
35 U.S.C. 371(f), noaction maybe taken prior to one month after
entry into the national stage.
(b) A national stage application filed under 35 U.S.C. 371
may have .paid therein the basicnational fee as set forth in
§ 1.492(a)(4)if it contains, oris amended to contain,atthe time of
entry into the national stage, only claims which have been indicatedin
an international preliminary examination report prepared
by theUnitedStates Patent andTrademark Officeas satisfying the
criteria of PCT Article 33(1)-(4) as to novelty. inventive step and
industrial applicability. Such national stage applications in which
the basic national fee as set forth in § 1.492(a)(4) bas been paid
maybe amended subsequent to the dateof entry into the national
stage only to'the exte.nt, necessary to eliminate objections as to
form orto cancel rejected claims. Suchnational stageapplications
in which the basic national fee as set forth in § 1.492(a)(4) bas
beenpaidwill betaken tipoutof order.
An international application which enters the
national stage will be forwarded to the appropriate
Technology Center (TC) for examination in tum
based on the 35 U.S.c. 371(c) date of the application.
As set forth in 37 CPR 1.496(b), if an application
includes only claims which have been indicated in an
!PER prepared by the USPTO to satisfy the criteria of
PCT Article 33(1)-(4), the application qualifies for the
reduced basic national fee set forth in 37 CPR
1.492(a)(4). Applications in which the.reduced basic
national fee has. been paid will be taken up out of
order by the examiner. See MPEP § 708 fora discussion
of the order of examination of applications by
examiners.
Once the national stage application has been taken
up by the examiner, prosecution proceeds in the same
manner as for a domestic application with the exceptions
that: