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 I I 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 s tage: 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 USC 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 USC 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 «̂ «ey-
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 s tage: 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 USC 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 USC 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. I t 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.