Where the basic national fee has been paid and the copy of the international application (if required) has been received not later than the expiration of 30 months from the priority date, but applicant has omitted any required item set forth in 37 CFR 1.495(c)(1), the Office will process the national stage application in accordance with the provisions of 37 CFR 1.495 in effect for that application. 495 was amended to permit postponement of the submission of the inventor’s oath or declaration under certain conditions and is applicable to national stage applications having an international filing date on or after . For national stage applications having an international filing date prior to , the pre-AIA version of 37 CFR 1.495 remains in effect.
If the international filing date is prior to and the basic national fee has been paid and the copy of the international application (if required) has been received not later than the expiration of 30 months from the priority date, but the required oath or declaration, translation, search fee (37 CFR 1.492(b)), examination fee (37 CFR 1.492(c)), or application size fee (37 CFR 1.492(j)) has not been filed prior to commencement of the national stage (see MPEP § ), the Office will send applicant a notice identifying any deficiency and provide a period of time to correct the deficiency as set forth in 37 CFR 1.495(c). The time period usually set is 2 months from the date of the notification by the Office or 32 months from the priority date, whichever is later. This period may be extended for up to 5 additional months pursuant to the provisions of 37 CFR 1.136(a). The processing fee set forth in 37 CFR 1.492(i) will be required for acceptance of an English translation of the international application later than the expiration of thirty months after the priority date, and the surcharge fee set forth in 37 CFR 1.492(h) will be required for acceptance of any of the search fee, examination fee, or oath or declaration of the inventor after the date of commencement. See pre-AIA 37 CFR 1.495(c)(3).
Failure to timely file the proper reply to the notification will result in abandonment of the national stage application
If the international filing date is on or after , the filing of the oath or declaration may be postponed until the application is otherwise in condition for date me allowance if applicants submit an application data sheet in accordance with 37 CFR 1.76 identifying each inventor by his or her legal name, the mailing address where each inventor customarily receives mail, and the residence of each inventor, if the inventor lives at a location which is different from where the inventor customarily receives mail. 37 CFR 1.495(c)(3).
Article 19 amendments including a complete claim set in English will be entered by replacing the original English language claims of the international application with the amended claim set
For further information regarding the oath or declaration required under 35 U.S.C. 371(c)(4) and 37 CFR 1.497 see MPEP § (e).
The claims of an international application ended under PCT Article 19 after issuance of the search report. The description and drawings endment is forwarded to the U.S. Designated Office by the International Bureau for inclusion in the U.S. national stage application. If the Article 19 amendments were made in a language other than English, applicant must provide an English translation for the U.S. national stage application. The Article 19 amendment(s) and the English translation of the amendment(s) must be received by the Office by the date of commencement of the national stage (see MPEP § ). Otherwise, the amendment(s) will be considered to be canceled, 35 U.S.C. 371(d). If such canceled amendments are desired, they must be offered under 37 CFR 1.121 as a preliminary amendment or a responsive amendment under 37 CFR 1.111. In this regard, the “Transmittal Letter To The United States Designated/Elected Office (DO/EO/US) Concerning A Submission Under 35 U.S.C. 371″ (Form PTO-1390) available at includes a check box by which the applicant may expressly instruct the U.S. Designated/Elected Office not to enter the Article 19 amendment(s) in the United States national stage application.