35 U.S.C. § 371 — National stage: Commencement

Page 141 TITLE 35—PATENTS § 371 (Added Pub. L. 94–131, § 1, Nov. 14, 1975, 89 Stat. 687; amended Pub. L. 98–622, title IV, § 403(a), Nov. 8, 1984, 98 Stat. 3392; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582; Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906.) Editorial Notes AMENDMENTS 2002—Subsec. (a). Pub. L. 107–273 made technical cor- rection to directory language of Pub. L. 106–113. See 1999 Amendment note below. 1999—Subsec. (a). Pub. L. 106–113, as amended by Pub. L. 107–273, substituted ‘‘Director’’ for ‘‘Commissioner’’. 1984—Subsec. (a). Pub. L. 98–622 substituted ‘‘Patent and Trademark Office’’ for ‘‘Patent Office’’. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 1999 AMENDMENT Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of this title. EFFECTIVE DATE OF 1984 AMENDMENT Amendment by Pub. L. 98–622 effective Nov. 8, 1984, see section 406(a) of Pub. L. 98–622, set out as a note under section 351 of this title. EFFECTIVE DATE Section effective Jan. 24, 1978, and applicable to international and national applications filed on and after that date, see section 11 of Pub. L. 94–131, set out as a note under section 351 of this title. § 368. Secrecy of certain inventions; filing inter- national applications in foreign countries (a) International applications filed in the Pat- ent and Trademark Office shall be subject to the provisions of chapter 17. (b) In accordance with article 27(8) of the trea- ty, the filing of an international application in a country other than the United States on the invention made in this country shall be consid- ered to constitute the filing of an application in a foreign country within the meaning of chapter 17, whether or not the United States is des- ignated in that international application. (c) If a license to file in a foreign country is refused or if an international application is or- dered to be kept secret and a permit refused, the Patent and Trademark Office when acting as a Receiving Office, International Searching Au- thority, or International Preliminary Exam- ining Authority, 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; amended Pub. L. 98–622, title IV, § 403(a), Nov. 8, 1984, 98 Stat. 3392; Pub. L. 99–616, § 6, Nov. 6, 1986, 100 Stat. 3486; Pub. L. 112–29, § 20(j), Sept. 16, 2011, 125 Stat. 335.) Editorial Notes AMENDMENTS 2011—Subsecs. (a), (b). Pub. L. 112–29 struck out ‘‘of this title’’ after ‘‘17’’. 1986—Subsec. (c). Pub. L. 99–616 substituted a comma for ‘‘or’’ after ‘‘Receiving Office’’ and ‘‘International Preliminary Examining Authority’’ for ‘‘both’’. 1984—Subsecs. (a), (c). Pub. L. 98–622 substituted ‘‘Patent and Trademark Office’’ for ‘‘Patent Office’’. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2011 AMENDMENT Amendment by Pub. L. 112–29 effective upon the expi- ration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title. EFFECTIVE DATE OF 1986 AMENDMENT Amendment by Pub. L. 99–616 effective July 1, 1987, and applicable to all international applications pending before or after that date, see section 9 of Pub. L. 99–616, set out as a note under section 351 of this title. EFFECTIVE DATE OF 1984 AMENDMENT Amendment by Pub. L. 98–622 effective Nov. 8, 1984, see section 406(a) of Pub. L. 98–622, set out as a note under section 351 of this title. EFFECTIVE DATE Section effective Jan. 24, 1978, and applicable to international and national applications filed on and after that date, see section 11 of Pub. L. 94–131, set out as a note under section 351 of this title. CHAPTER 37—NATIONAL STAGE Sec. 371. National stage: Commencement. 372. National stage: Requirements and procedure. [373. Repealed.] 374. Publication of international application. 375. Patent issued on international application: Effect. 376. Fees. Editorial Notes AMENDMENTS 2013—Pub. L. 112–274, § 1(i), Jan. 14, 2013, 126 Stat. 2457, struck out item 373 ‘‘Improper applicant’’. 1999—Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4507(12)], as added by Pub. L. 107–273, div. C, title III, § 13205(2)(F), Nov. 2, 2002, 116 Stat. 1903, substituted ‘‘Publication of international application’’ for ‘‘Publi- cation of international application: Effect’’ in item 374. § 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 examina- tion reports including any annexes thereto may be required in the case of international applica- tions designating or electing the United States. (b) Subject to subsection (f) of this section, the national stage shall commence with the ex- piration of the applicable time limit under arti- cle 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 Inter- national Bureau, and a translation into the English language of the international applica- tion, if it was filed in another language; (3) amendments, if any, to the claims in the international application, made under article Page 142 TITLE 35—PATENTS § 371 19 of the treaty, unless such amendments have been communicated to the Patent and Trade- mark 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 requirements with respect to the na- tional 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 ap- plication 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. 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 com- mencement 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 re- garded as cancellation of the amendments made under article 34(2)(b) of the treaty. (e) After an international application has en- tered 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 pre- sent amendments to the specification, claims and drawings of the application after the na- tional 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 require- ments of subsection (c) of this section have been complied with. (Added Pub. L. 94–131, § 1, Nov. 14, 1975, 89 Stat. 688; amended Pub. L. 98–622, title IV, §§ 402(a)–(d), 403(a), Nov. 8, 1984, 98 Stat. 3391, 3392; Pub. L. 99–616, § 7, Nov. 6, 1986, 100 Stat. 3486; Pub. L. 102–204, § 5(g)(2), Dec. 10, 1991, 105 Stat. 1641; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582; Pub. L. 107–273, div. C, title III, § 13206(a)(20), (b)(1)(B), Nov. 2, 2002, 116 Stat. 1905, 1906; Pub. L. 112–29, § 20(i)(5), (j), Sept. 16, 2011, 125 Stat. 335; Pub. L. 112–211, title II, § 202(b)(9), Dec. 18, 2012, 126 Stat. 1536.) Editorial Notes AMENDMENTS 2012—Subsec. (d). Pub. L. 112–211 struck out ‘‘, unless it be shown to the satisfaction of the Director that such failure to comply was unavoidable’’ after ‘‘by the parties thereof’’. 2011—Subsec. (b). Pub. L. 112–29, § 20(i)(5), substituted ‘‘of the treaty.’’ for ‘‘of the treaty’’. Subsec. (c)(1). Pub. L. 112–29, § 20(j), struck out ‘‘of this title’’ after ‘‘41(a)’’. Subsec. (c)(4). Pub. L. 112–29, § 20(j), struck out ‘‘of this title’’ after ‘‘11’’ and after ‘‘115’’. 2002—Subsec. (d). Pub. L. 107–273, § 13206(b)(1)(B), made technical correction to directory language of Pub. L. 106–113. See 1999 Amendment note below. Pub. L. 107–273, § 13206(a)(20), inserted period at end. 1999—Subsec. (d). Pub. L. 106–113, as amended by Pub. L. 107–273, § 13206(b)(1)(B), substituted ‘‘Director’’ for ‘‘Commissioner’’ wherever appearing. 1991—Subsec. (c)(1). Pub. L. 102–204 substituted ‘‘pro- vided in section 41(a) of this title’’ for ‘‘prescribed under section 376(a)(4) of this part’’. 1986—Subsec. (a). Pub. L. 99–616, § 7(a), amended sub- sec. (a) generally. Prior to amendment, subsec. (a) read as follows: ‘‘Receipt from the International Bureau of copies of international applications with amendments to the claims, if any, and international search reports may be required in the case of all international appli- cations designating the United States.’’ Subsec. (b). Pub. L. 99–616, § 7(b), amended subsec. (b) generally, substituting ‘‘, or under article 39(1)(a) of the treaty’’ for ‘‘of the treaty.’’ Subsec. (c)(4), (5). Pub. L. 99–616, § 7(c), (d), sub- stituted a semicolon for a period at end of par. (4) and added par. (5). Subsec. (d). Pub. L. 99–616, § 7(e), inserted ‘‘The re- quirement of subsection (c)(5) shall be complied with at such time as may be fixed by the Commissioner and failure to do so shall be regarded as cancellation of the amendments made under article 34(2)(b) of the treaty’’ at end. Subsec. (e). Pub. L. 99–616, § 7(f), inserted ‘‘or article 41’’ after ‘‘article 28’’. 1984—Subsec. (a). Pub. L. 98–622, § 402(a), substituted ‘‘may be’’ for ‘‘is’’ and struck out ‘‘, except those filed in the Patent Office’’ after ‘‘United States’’, which amendment was executed by striking out ‘‘, except those filed in the Patent and Trademark Office’’ as the probable intent of Congress in view of the amendment by section 403(a) of Pub. L. 98–622. See Effective Date of 1984 Amendment note below. Pub. L. 98–622, § 403(a), substituted ‘‘Patent and Trademark Office’’ for ‘‘Patent Office’’. Subsec. (b). Pub. L. 98–622 struck out ‘‘, at which time the applicant shall have complied with the appli- cable requirements specified in subsection (c) of this section’’ after ‘‘of the treaty’’. Subsec. (c). Pub. L. 98–622, § 403(a), substituted ‘‘Pat- ent and Trademark Office’’ for ‘‘Patent Office’’ in pro- visions preceding par. (1) and in par. (3). Subsec. (c)(2). Pub. L. 98–622, § 402(c)(1), (2), sub- stituted ‘‘communicated by’’ for ‘‘received from’’ and struck out ‘‘verified’’ before ‘‘translation’’. Subsec. (d). Pub. L. 98–622, § 402(d), substituted provi- sions setting forth time periods for compliance with the requirements of subsec. (c), payments of sur- charges, and the effect of failure to comply for provi- sions related only to the effect of failure to comply with the requirements of subsec. (c). Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2012 AMENDMENT Amendment by Pub. L. 112–211 effective on the date that is 1 year after Dec. 18, 2012, applicable to patents issued before, on, or after that effective date and patent applications pending on or filed after that effective date, and not effective with respect to patents in litiga- Page 143 TITLE 35—PATENTS § 374 tion commenced before that effective date, see section 203 of Pub. L. 112–211, set out as an Effective Date note under section 27 of this title. EFFECTIVE DATE OF 2011 AMENDMENT Amendment by Pub. L. 112–29 effective upon the expi- ration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title. EFFECTIVE DATE OF 1999 AMENDMENT Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of this title. EFFECTIVE DATE OF 1986 AMENDMENT Amendment by Pub. L. 99–616 effective July 1, 1987, and applicable to all international applications pending before or after that date, see section 9 of Pub. L. 99–616, set out as a note under section 351 of this title. EFFECTIVE DATE OF 1984 AMENDMENT Amendment by section 402(a)–(d) of Pub. L. 98–622 ef- fective six months after Nov. 8, 1984, see section 406(b) of Pub. L. 98–622, set out as a note under section 3 of this title. Amendment by section 403(a) of Pub. L. 98–622 effec- tive Nov. 8, 1984, see section 406(a) of Pub. L. 98–622, set out as a note under section 351 of this title. EFFECTIVE DATE Section effective Jan. 24, 1978, and applicable to international and national applications filed, on and after that date, see section 11 of Pub. L. 94–131, set out as a note under section 351 of this title. § 372. National stage: Requirements and proce- dure (a) All questions of substance and, within the scope of the requirements of the treaty and Reg- ulations, procedure in an international applica- tion designating the United States shall be de- termined as in the case of national applications regularly filed in the Patent and Trademark Of- fice. (b) In case of international applications desig- nating but not originating in, the United States— (1) the Director may cause to be reexamined questions relating to form and contents of the application in accordance with the require- ments of the treaty and the Regulations; (2) the Director may cause the question of unity of invention to be reexamined under sec- tion 121, within the scope of the requirements of the treaty and the Regulations; and (3) the Director may require a verification of the translation of the international applica- tion or any other document pertaining to the application if the application or other docu- ment was filed in a language other than English. (Added Pub. L. 94–131, § 1, Nov. 14, 1975, 89 Stat. 689; amended Pub. L. 98–622, title IV, §§ 402(e), (f), 403(a), Nov. 8, 1984, 98 Stat. 3392; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582; Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906; Pub. L. 112–29, § 20(j), Sept. 16, 2011, 125 Stat. 335.) Editorial Notes AMENDMENTS 2011—Subsec. (b)(2). Pub. L. 112–29 struck out ‘‘of this title’’ after ‘‘121’’. 2002—Subsec. (b). Pub. L. 107–273 made technical cor- rection to directory language of Pub. L. 106–113. See 1999 Amendment note below. 1999—Subsec. (b). Pub. L. 106–113, as amended by Pub. L. 107–273, substituted ‘‘Director’’ for ‘‘Commissioner’’ wherever appearing. 1984—Subsec. (a). Pub. L. 98–622, § 403(a), substituted ‘‘Patent and Trademark Office’’ for ‘‘Patent Office’’. Subsec. (b)(3). Pub. L. 98–622, § 402(e), added par. (3). Subsec. (c). Pub. L. 98–622, § 402(f), struck out subsec. (c) which related to cancellation of claims and payment of special fees. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2011 AMENDMENT Amendment by Pub. L. 112–29 effective upon the expi- ration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title. EFFECTIVE DATE OF 1999 AMENDMENT Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of this title. EFFECTIVE DATE OF 1984 AMENDMENT Amendment by section 402(e), (f) of Pub. L. 98–622 ef- fective six months after Nov. 8, 1984, see section 406(b) of Pub. L. 98–622, set out as a note under section 3 of this title. Amendment by section 403(a) of Pub. L. 98–622 effec- tive Nov. 8, 1984, see section 406(a) of Pub. L. 98–622, set out as a note under section 351 of this title. EFFECTIVE DATE Section effective Jan. 24, 1978, and applicable to international and national applications filed, on and after that date, see section 11 of Pub. L. 94–131, set out as a note under section 351 of this title. [§ 373. Repealed. Pub. L. 112–274, § 1(i), Jan. 14, 2013, 126 Stat. 2457] Section, added Pub. L. 94–131, § 1, Nov. 14, 1975, 89 Stat. 689; amended Pub. L. 98–622, title IV, § 403(a), Nov. 8, 1984, 98 Stat. 3392; Pub. L. 103–465, title V, § 532(c)(5), Dec. 8, 1994, 108 Stat. 4987; Pub. L. 112–29, § 20(j), Sept. 16, 2011, 125 Stat. 335, related to improper applicant. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF REPEAL Repeal effective Jan. 14, 2013, and applicable to pro- ceedings commenced on or after such date, see section 1(n) of Pub. L. 112–274, set out as an Effective Date of 2013 Amendment note under section 5 of this title. § 374. Publication of international application The publication under the treaty defined in section 351(a), of an international application designating the United States shall be deemed a publication under section 122(b), except as pro- vided in section 154(d). (Added Pub. L. 94–131, § 1, Nov. 14, 1975, 89 Stat. 689; amended Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4507(10)], Nov. 29, 1999, 113 Stat. 1536, 1501A–566; Pub. L. 107–273, div. C, title III, § 13205(2)(E), Nov. 2, 2002, 116 Stat. 1903; Pub. L.