DEPARTMENT OF COMMERCE
                          Patent and Trademark Office
                                 37 CFR Part 1

                         [Docket #: 980511124-8124-01]

                     Revision of Patent Cooperation Treaty
                             Application Procedure
   
  
AGENCY: Patent and Trademark Office, Commerce.

ACTION: Interim rule with request for public comments.

SUMMARY: The Patent and Trademark Office (Office or USPTO) is amending
its rules of practice relating to applications filed under the Patent
Cooperation Treaty (PCT) to conform the United States rules of practice
with the corresponding changes to the Regulations under the PCT which
become effective July 1, 1998. The result will be more streamlined
procedures for filing and prosecuting international applications under
the PCT.

DATES: EFFECTIVE DATE: July 1, 1998.

COMMENT DEADLINE DATE: To be ensured of consideration, written comments
must be received on or before July 31, 1998. No public hearing will be
held.

ADDRESSES: Address written comments to: Box CommentsPatents, Assistant
Commissioner for Patents, Washington, D.C. 20231, or by facsimile to
(703) 308-6459, marked to the attention of Richard Lazarus. Comments
submitted by facsimile should be followed by a copy of the comments
submitted by mail. The Office would also prefer that comments submitted
by mail be accompanied by a copy of the comments in a standard word
processing format on a 3 1/4 inch disk.
 
The comments will be available for public inspection in Crystal Plaza
Two, room 7A04, 2011 South Clark Place, Arlington, Virginia, and will be
available through anonymous file transfer protocol (ftp) via the
Internet (address: ftp.uspto.gov). Since comments will be made available
for public inspection, information that is not desired to be made
public, such as an address or phone number, should not be included in
the comments.

FOR FURTHER INFORMATION CONTACT: Richard Lazarus, PCT Legal Office
Supervisor, by telephone at (703) 308-6451; or by mail addressed to: Box
PCT, Assistant Commissioner for Patents, Washington, DC 20231; or by
facsimile to (703) 308-6459, marked to the attention of Richard Lazarus.

SUPPLEMENTARY INFORMATION: During a September-October 1997 meeting of
the Governing Bodies of the World Intellectual Property Organization
(WIPO), the PCT Assembly adopted amendments to the PCT Regulations,
which will take effect on July 1, 1998. The amended PCT Regulations were
published in the Official Gazette at 1210 Off. Gaz. Pat. Office 29 (May
12, 1998). The resulting changes to PCT practice will improve filing and
processing procedures for applicants filing international applications.

This interim rule amends the United States rules of practice to conform
them to corresponding changes made to the PCT Regulations that will take
effect on July 1, 1998.The interim rules will also be effective on July
1, 1998. The Office will publish a final rule either confirming the
adoption of these interim rules as final rules or adopting final rules
which reflect changes made based upon the public comments received in
response to this interim rule.

Applicants are hereby notified that PCT Rules 20.4(c) and 26.3ter(a) and
(c) as amended are not compatible with the national law of the United
States, and thus the USPTO has taken a reservation on adherence to these
Rules through its notification to the Director General of WIPO to such
effect. See PCT Rules 20.4(d) and 26.3ter(b) and (d).Applicants of
international applications in the United States need to be aware of
these differences to avoid the consequences of failing to comply with
the requirements of United States law. For example, PCT Rules 20.4(c)
and 26.3ter(a) and (c) permit an international filing date to be
accorded notwithstanding that portions of the international application
are in a language not acceptable to the Receiving Office. 35 U.S.C. 361
does not permit this practice and a filing date will not be accorded by
the USPTO under these provisions or circumstances. However, if any
portion of the international application is not in English, but is in a
language of filing accepted by the International Bureau, it will be
forwarded to the International Bureau pursuant to the provisions of PCT
Rule 19.4.The International Bureau will act as a Receiving Office and
accord a receipt date as of the receipt date in the USPTO.

Similarly, the USPTO continues not to adhere to the unchanged provisions
of PCT Rule 49.5(cbis) and (k) with respect to the translation
requirements for United States national stage applications (35 U.S.C.
371(c)(2)). See PCT Rule 49.5(l).

The above noted changes to the PCT Regulations include the addition of
new PCT Rules 89bis and 89ter (directed to electronic filing and
processing of international applications) which will enter into force at
the same time as the modifications to the Administrative Instructions
implementing those PCT Rules. Implementation of PCT Rules 89bis and
89ter is optional with each national office. In the event that the USPTO
decides to implement PCT Rules 89bis and 89ter, the USPTO will provide
notice to that effect in the Federal Register and Official Gazette.

Discussion of Specific Rules:

Title 37 of the Code of Federal Regulations, Part 1, is amended as
follows:

Section 1.14(g) is added to comply with the amendments to PCT Rule 94.
After international publication and establishment of the international
preliminary examination report, third parties are permitted access to
documents from the file of the International Preliminary Examining
Authority in the USPTO's elected office file (not the international
preliminary examination file) to the same extent as access to United
States national applications.

Section 1.412(c)(6) is amended to conform to the changes to PCT Rule
19.4(a). The change relates to the procedures for the filing of
international applications and their processing by the Receiving Office.
The change broadens the circumstances in which an international
application may be transmitted to the International Bureau as the
Receiving Office and adds more flexibility for applicants and the United
States Receiving Office in determining whether to forward the
international application to the International Bureau as the Receiving
Office. When the international application is filed with the USPTO and
the language in which the application is filed is not accepted by the
USPTO, or if the applicant does not have the requisite residence or
nationality, the application may be forwarded to the International
Bureau for receiving Office processing.

Section 1.416(c) is amended to reflect the addition of new PCT Rule
59.3. The change provides a safeguard in the case of a Demand filed with
the USPTO which is not competent as the International Preliminary
Examining Authority. The Office forwards the Demand and the competent
International Preliminary Examining Authority processes the Demand based
on the date of receipt in the USPTO. This section is rewritten to: (1)
redesignate current paragraphs (c)(2) through (c)(6) as paragraphs
(c)(3) through (c)(7), respectively; and (2) add "[f]orwarding Demands
in accordance with PCT Rule 59.3" as a new paragraph (c)(2).

Section 1.419 is added pursuant to 44 U.S.C. 3512(a) and 5 CFR
1320.5(b). As the Office cannot add the information specified in 5 CFR
1320.5(b) to the forms prescribed by the International Bureau, the
Office is adopting    1.419 to provide the information display required
by 5 CFR 1320.5(b)(2)(i). See 5 CFR 1320.5(b)(2)(ii)(D). Section 1.419
specifically provides: (1) that the collection of information in 37 CFR
Part 1, Subpart C, has been reviewed and approved by the Office of
Management and Budget under control number 0651-0021; (2) that    1.419
constitutes the display required by 44 U.S.C. 3512(a) and 5 CFR
1320.5(b)(2)(i) for the collection of information under Office of
Management and Budget control number 0651-0021; and (3) a notice under 5
CFR 1320.5(b)(2)(i) that:
   
   Notwithstanding any other provision of law, no person is required to
respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid Office of Management and Budget control
number.
   
Section 1.431 is amended to reflect corresponding changes to PCT Rules
14, 15, 16 and 16bis. This section is amended to: (1) provide in
paragraph (c) that the basic, transmittal, and search fee payable is the
basic, transmittal, and search fee in effect on the filing date of the
international application (see PCT Rule 14.1(c), 15.4(a), and 16.1(f));
(2) eliminate the unassociated text following former paragraph (c)(2);
(3) add "prior to the sending of a notice of deficiency"; and (4) add a
reference to PCT Rule 16bis.1(e) in paragraph (d).These changes will
reduce mistakes in paying fees where different fees have different times
for payment. The change simplifies the fees due to be the fee amounts
(basic, transmittal and search) in effect on the date of receipt of the
international application.Additionally, the change provides the
additional benefit of delaying the effect of the sanction until the
sending of the notice of such sanction.

Section 1.432 is amended to reflect corresponding changes to PCT Rules
15 and 16bis.The changes relate to the time periods and amounts due for
the payment of designation and confirmation fees. Paragraph (b) has been
rewritten, for the purposes of clarity, as paragraphs (b)(1) and (b)(2),
with paragraph (b)(2) comprising the unassociated text following former
paragraph (b)(3). Additionally, former paragraph (b)(3), now paragraph
(b)(1)(iii), has been amended to include the timeliness provision of new
PCT Rule 16bis.1(e).

Section 1.432 is further amended to designate paragraph (c) as
paragraphs (d), (d)(1) and (d)(2) for better clarity.
Section 1.432 is further amended to add a new paragraph (c) providing
the amount payable for the designation fee set forth in    1.432(b).
Section 1.432(c)(1) provides that if the designation fee is paid in full
within one month from the date of receipt of the international
application, the amount payable for the designation fee is the
designation fee in effect on the filing date of the international
application. Section 1.432(c)(2) provides that if the designation fee is
paid in full later than one month from the date of receipt of the
international application, but within one year from the priority date,
the amount payable for the designation fee is the designation fee in
effect on the date such fee is paid in full. Section 1.432(c)(3)
provides that if the designation fee was due one year from the priority
date, and such fee is paid in full later than one month from the date of
receipt of the international application and later than one year from
the priority date, the amount payable for the designation fee is the
designation fee in effect on the date one year from the priority date.
Section 1.432(c)(4) provides that if the designation fee was due one
month from the international filing date and after one year from the
priority date, and such fee is paid in full later than one month from
the date of receipt of the international application and later than one
year from the priority date, the amount payable for the designation fee
is the designation fee in effect on the international filing date.

The addition of new paragraph (c) reflects the corresponding changes to
PCT Rules 15.4(b), 15.4(c) and 16bis.1.

Section 1.435 is amended to conform to the change to PCT Rule 13ter
incorporating the common computer readable form standard prescribed by
the Administrative Instructions.The amendments to Section 1.435 change
"Administrative Instruction 204" to "sections 204 and 208 of the
Administrative Instructions."

Section 1.445 is amended to re-insert paragraphs (a)(4) and (a)(5) that
were inadvertently deleted. Section 1.445(a)(4) was inadvertently
omitted in Revision of Patent Fees; Final Rule Notice, 59 FR 43736
(August 25, 1994), 1165 Off. Gaz. Pat. Office 132 (August 30, 1994), and
   1.445(a)(5) was inadvertently omitted in Revision of Patent and
Trademark Fees; Final Rule Notice, 60 FR 41018 (August 11, 1995), 1177
Off. Gaz. Pat. Office 171 (August 29, 1995).

Section 1.451 is amended to conform to the changes made to PCT Rule 4.10
and the addition of new PCT Rule 26bis. The changes reflect the ability
of applicants to now add or correct priority claims after the filing of
the international application. This section is amended to: (1) add a new
paragraph (d) which provides that the applicant may correct or add a
priority claim in accordance with PCT Rule 26bis.1; and (2) add the
phrase "subject to paragraph (d)" to paragraph (a).

Section 1.461 is amended to reflect the corresponding change to PCT Rule
19.4 wherein an international application filed in error with the USPTO
may be forwarded to the International Bureau for processing as Receiving
Office. The new provisions expand the flexibility for forwarding an
international application which is filed with, but not accepted by, the
USPTO.

Section 1.465 is amended to conform to the changes made to PCT Rule 4.10
and the addition of new PCT Rule 26bis concerning the time period in
which applicant may add or correct a priority claim. Under the new
provisions, an applicant may add or correct a priority claim until
sixteen months from the priority date, or where the priority date is
changed, sixteen months from the priority date as so changed, whichever
period expires first. All priority claim additions or changes must,
however, be submitted no later than four months from the international
filing date. Section 1.465(b) is amended to change the phrase "cancelled
under PCT Rule 4.10(d), or considered not to have been made under PCT
Rule 4.10(b)" to "corrected or added under PCT Rule 26bis.1(a), or
withdrawn under PCT Rule 90bis.3, or considered not to have been made
under PCT Rule 26bis.2."Section 1.465(b) is further amended to change
the phrase "computing time limits" to "computing any non-expired time
limits" to be in accord with the provision of new PCT Rules 26bis.1(c).
As suggested by the latter amendment to Section 1.465(b), time limits
which have already expired at the time of the addition, correction, or
withdrawal of a priority claim are not subject to recomputation. Section
1.465(c) is amended to change the reference to PCT "Rule 4.10(d)" to
"PCT Rule 26bis.2(b)."

Section 1.471 is amended to clarify the rule to conform it to amended
PCT Rule 12.Section 1.471 is amended to: (1) indicate that it also
applies to corrections submitted to the United States International
Searching Authority; (2) explicitly require that corrections be in
English and in compliance with PCT Rules 10 and 11; (3) provide that one
"appropriate" addition or change of not more than five words per sheet
may be stated in a letter; and (4) provide that amendments that do not
comply with PCT Rules 10 and 11 may not be entered. PCT Rule 12 was
amended to allow the Receiving Office to accept an international
application in any language. In these instances, a translation may be
required for the International Searching Authority, and any corrections
are required to be submitted in both the language of the application and
the language of the translation.35 U.S.C. 361(c) reflects that the
United States Receiving Office only accepts international applications
in English and, in accordance with the agreement between the United
States and the International Bureau, the United States International
Searching and Examining Authorities will only process international
applications in English. Thus, any changes under    1.471 must be in
English. Section 1.471 is also clarified to reflect that PCT Rules 10
and 11 apply to any later submitted documents.

Section 1.480 is amended to clarify the rule to conform it to amended
PCT Rule 59.3.Section 1.480 is amended to change "Demand and payment of
the fees for international preliminary examination (   1.482)" to
"proper Demand in an application for which the United States
International Preliminary Examining Authority is competent and for which
the fees for international preliminary examination (   1.482) have been
paid." PCT Rule 59.3 was amended to allow a non-competent authority to
forward a Demand either to the International Bureau or the competent
international preliminary examining authority.Section 1.480 is changed
to clarify that the United States International Preliminary Examining
Authority only conducts international preliminary examinations in
international applications where the United States is the competent
International Preliminary Examining Authority.

Section 1.481(a) is added to reflect the corresponding changes to PCT
Rules 57 and 58, as well as the addition of PCT Rule 58bis. PCT Rule
57.3 sets the time limit for paying and the amount of the handling fee,
and PCT Rule 58.1(b) provides that the provisions of PCT Rule 57.3 apply
to the time limit for paying and the amount of the preliminary
examination fee. Section 1.481(a) provides that the handling and
preliminary examination fees shall be paid within the time period set in
PCT Rule 57.3, and that the handling fee or preliminary examination fee
payable is the handling fee or preliminary examination fee in effect on
the date of receipt of the Demand in the United States International
Preliminary Examining Authority. PCT Rule 58bis.1(c) was added to
consider the handling fee and examination fee to have been received
before the expiration of the time period set in PCT Rule 57.3 if the
fees were submitted prior to the sending of an invitation to pay the
fees. PCT Rule 58bis.1(a) was added to now allow the International
Preliminary Examining Authority to collect a late payment fee, if the
fees for preliminary examination are not paid prior to the sending of
the invitation. PCT Rule 58bis.2 sets the amount of the late payment
fee. Section 1.481(a) reflects changes to PCT Rule 58bis by providing
that if the handling and preliminary fees are not paid within the time
period set in PCT Rule 57.3, applicants will be notified and given one
month within which to pay the deficient fees plus a late payment fee
equal to the greater of: (1) fifty percent of the amount of the
deficient fees, but not exceeding an amount equal to double the handling
fee, or (2) an amount equal to the handling fee (PCT Rule 58bis.2).
Section 1.481 also provides that the one-month time limit set in   
1.481(a) to pay deficient fees may not be extended.

Section 1.481(b) is added to reflect the addition of PCT Rule
58bis.1(d). Section 1.481(b) provides that if the payment needed to
cover the handling and preliminary examination fees, pursuant to   
1.481(a), is not timely made in accordance with added PCT Rule
58bis.1(d), the United States International Preliminary Examination
Authority will declare the Demand to be considered as if it had not been
submitted. In this regard, where the Authority sends a notification that
the Demand is considered not to have been made and applicant's payment
is received, both on that same date, the fee is considered to be late
and the notification remains effective. The fee must antedate the notice
in order for the notice not to be effective.

Section 1.484(b) is amended to clarify the rule in conformance with
amended PCT Rule 59.3. Section 1.484(b) is amended to: (1) change
"Demand" to "proper Demand in an application for which the United States
International Preliminary Examining Authority is competent and for which
the fees for international preliminary examination (   1.482) have been
paid and"; and (2) eliminate the unassociated text following former
paragraph (b)(3). PCT Rule 59.3 was amended to allow a non-competent
receiving Office or international authority to forward a Demand either
to the International Bureau or the competent International Preliminary
Examining Authority. This change has the consequence of providing a
safeguard for applicants who are filing a Demand at the end of nineteen
months from the priority date and through error deposit the Demand with
a receiving Office or an international authority that is not competent.

Section 1.484(b) is changed to reflect that the United States
International Preliminary Examining Authority only conducts
international preliminary examination where the United States is the
competent International Preliminary Examining Authority.

Section 1.485(a) is amended by adding that the replacement sheets must
be "in compliance with PCT Rules 10 and 11." The amendment incorporates
the change to PCT Rule 11.14 which makes the formal requirements of PCT
Rules 10 and 11 applicable to amendments during the international
preliminary examination phase.

Sections 1.494(c) and 1.495(c) are amended to provide that a "Sequence
Listing" need not be translated if the "Sequence Listing" complies with
PCT Rule 12.1 and the description complies with PCT Rule 5.2(b).

Review Under the Paperwork Reduction Act of 1995.

Notwithstanding any other provision of law, no person is required to
respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act (PRA) unless that collection of information
displays a currently valid OMB control number.

This rule contains collections of information requirements subject to
the PRA.The principal impact of this interim rule is to conform the
United States rules of practice relating to applications filed under the
PCT to the corresponding amendments made to the Regulations under the
PCT.

The public reporting burden for these collections of information have
been approved by the Office of Management and Budget (OMB) under OMB
control number 0651-0021.The public reporting burden for this collection
of information is estimated to average .954 hours per response,
including the time for reviewing instructions, searching existing data
sources, gathering and maintaining the information. Send comments
regarding this burden estimate or any other aspect of the data
requirements, including suggestions for reducing this burden, to Richard
Lazarus at the address specified above or to the Office of Information
and Regulatory Affairs of OMB, New Executive Office Bldg., 725 17th St.
NW, rm. 10235, Washington, DC 20230, Attn: Desk Officer for the Patent
and Trademark Office.

Other Considerations.

The United States rules of practice contained in title 37, CFR, must
conform to the PCT Articles and the Regulations annexed to the PCT. See
PCT Article 27(1). This interim rule implements corresponding changes
required to conform United States rules for international applications
to the amendments to the PCT Regulations which become effective on July
1, 1998. Thus, this interim rule is covered by the foreign affairs
function exception of 5 U.S.C. 553(a)(1), and may be adopted without
prior notice and opportunity for public comment. See International
Brotherhood of Teamsters v. Pena, 17 F.3d 1478, 1486 (D.C. Cir. 1994).

In addition, the Commissioner of Patents and Trademarks, pursuant to
authority at 5 U.S.C. 553(b)(B), finds good cause to adopt the changes
made in this interim rule without prior notice and an opportunity for
public comment, as such procedures are timing-wise infeasible. The PCT
Regulations take effect on July 1, 1998. Delay in the promulgation of
these interim rules to provide notice and public comment procedures
would effectively preclude the required adoption in the United States of
the PCT Regulations by their effective date of July 1, 1998. See Petry
v. Block, 737 F.2d 1193, 1200-02 (D.C. Cir. 1984).

As prior notice and an opportunity for public comment are not required
pursuant to 5 U.S.C. 553, or any other law, the analytical requirements
of the Regulatory Flexibility Act, 5 U.S.C. 601 et seq., are
inapplicable.

This interim rule does not contain policies with federalism implications
sufficient to warrant preparation of a Federalism Assessment under
Executive Order 12612 (October 26, 1987).

This interim rule has been determined not to be significant for purposes
of Executive Order 12866 (September 30, 1993).

List of Subjects

37 CFR Part 1

Administrative practice and procedure, Courts, Freedom of Information,
Inventions and patents, Reporting and record keeping requirements, Small
Businesses.

For the reasons set forth in the preamble, 37 CFR Part 1 is amended as
follows:

PART 1 - RULES OF PRACTICE IN PATENT CASES

1.The authority citation for 37 CFR Part 1 continues to read as follows:
Authority: 35 U.S.C. 6, unless otherwise noted.

2. Section 1.14 is amended by adding paragraph (g) to read as follows:

   1.14 Patent applications preserved in confidence.

* * * * *

(g) Copies of an application file for which the United States acted as
the International Preliminary Examining Authority, or copies of a
document in such an application file, will be furnished in accordance
with Patent Cooperation Treaty Rule 94.2 or 94.3, upon payment of the
appropriate fee (   1.19(b)(2) or    1.19(b)(3)).

3. Section 1.412 is amended by revising paragraph (c)(6) to read as
follows:

   1.412 The United States Receiving Office.

* * * * *

(c) * * *

(6) Reviewing and, unless prescriptions concerning national security
prevent the application from being so transmitted (PCT Rule 19.4),
transmitting the international application to the International Bureau
for processing in its capacity as a Receiving Office:

(i)Where the United States Receiving Office is not the competent
Receiving Office under PCT Rule 19.1 or 19.2 and    1.421(a); or

(ii) Where the international application is not in English but is in a
language accepted under PCT Rule 12.1(a) by the International Bureau as
a Receiving Office; or

(iii) Where there is agreement and authorization in accordance with PCT
Rule 19.4(a)(iii).

4. Section 1.416 is amended by revising paragraph (c) to read as follows:

   1.416 The United States International Preliminary Examining Authority.

* * * * *

(c) The major functions of the International Preliminary Examining
Authority include:

(1) Receiving and checking for defects in the Demand;

(2) Forwarding Demands in accordance with PCT Rule 59.3;

(3) Collecting the handling fee for the International Bureau and the
preliminary examination fee for the United States International
Preliminary Examining Authority;

(4) Informing applicant of receipt of the Demand;

(5) Considering the matter of unity of invention;

(6) Providing an international preliminary examination report which is a
non-binding opinion on the questions of whether the claimed invention
appears: to be novel, to involve an inventive step (to be nonobvious),
and to be industrially applicable; and

(7) Transmitting the international preliminary examination report to
applicant and the International Bureau.

5. A new    1.419 is added before the undesignated center heading "Who
May File an International Application" to read as follows:

   1.419 Display of currently valid control number under the Paperwork
Reduction Act.

(a) Pursuant to the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et
seq.), the collection of information in this Subpart has been reviewed
and approved by the Office of Management and Budget under control number
0651-0021.

(b) Notwithstanding any other provision of law, no person is required to
respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid Office of Management and Budget control
number. This section constitutes the display required by 44 U.S.C.
3512(a) and 5 CFR 1320.5(b)(2)(i) for the collection of information
under Office of Management and Budget control number 0651-0021 (see 5
CFR 1320.5(b)(2)(ii)(D)).

6. Section 1.431 is amended by revising paragraphs (c) and (d) to read
as follows:

   1.431 International application requirements.

* * * * *

(c) Payment of the basic portion of the international fee (PCT Rule
15.2) and the transmittal and search fees (   1.445) may be made in full
at the time the international application papers required by paragraph
(b) of this section are deposited or within one month thereafter. The
basic, transmittal, and search fee payable is the basic, transmittal,
and search fee in effect on the receipt date of the international
application. (1) If the basic, transmittal and search fees are not paid
within one month from the date of receipt of the international
application and prior to the sending of a notice of deficiency,
applicant will be notified and given one month within which to pay the
deficient fees plus a late payment fee equal to the greater of:

(i) Fifty percent of the amount of the deficient fees up to a maximum
amount equal to the basic fee; or

(ii) An amount equal to the transmittal fee (PCT Rule 16bis).

(2) The one-month time limit set pursuant to this paragraph to pay
deficient fees may not be extended.

(d) If the payment needed to cover the transmittal fee, the basic fee,
the search fee, one designation fee and the late payment fee pursuant to
paragraph (c) of this section is not timely made in accordance with PCT
Rule 16bis.1(e), the Receiving Office will declare the international
application withdrawn under PCT Article 14(3)(a).

7. Section 1.432 is amended by revising its heading, paragraphs (b) and

(c) and adding paragraphs (d) to read as follows:

   1.432 Designation of States and payment of designation and
confirmation fees.

* * * * *

(b) If the fees necessary to cover all the national and regional
designations specified in the Request are not paid by the applicant
within one year from the priority date or within one month from the date
of receipt of the international application if that month expires after
the expiration of one year from the priority date, applicant will be
notified and given one month within which to pay the deficient
designation fees plus a late payment fee. The late payment fee shall be
equal to the greater of fifty percent of the amount of the deficient
fees up to a maximum amount equal to the basic fee, or an amount equal
to the transmittal fee (PCT Rule 16bis). The one-month time limit set in
the notification of deficient designation fees may not be extended.
Failure to timely pay at least one designation fee will result in the
withdrawal of the international application.

(1) The one designation fee must be paid:

(i) Within one year from the priority date;

(ii) Within one month from the date of receipt of the international
application if that month expires after the expiration of one year from
the priority date; or

(iii) With the late payment fee defined in this paragraph within the
time set in the notification of the deficient designation fees or in
accordance with PCT Rule 16bis.1(e).

(2) If after a notification of deficient designation fees the applicant
makes timely payment, but the amount paid is not sufficient to cover the
late payment fee and all designation fees, the Receiving Office will,
after allocating payment for the basic, search, transmittal and late
payment fees, allocate the amount paid in accordance with PCT Rule
16bis.1(c) and withdraw the unpaid designations. The notification of
deficient designation fees pursuant to this paragraph may be made
simultaneously with any notification pursuant to    1.431(c).

(c) The amount payable for the designation fee set forth in paragraph

(b) is:

(1) The designation fee in effect on the filing date of the
international application, if such fee is paid in full within one month
from the date of receipt of the international application;

(2) The designation fee in effect on the date such fee is paid in full,
if such fee is paid in full later than one month from the date of
receipt of the international application but within one year from the
priority date;

(3) The designation fee in effect on the date one year from the priority
date, if the fee was due one year from the priority date, and such fee
is paid in full later than one month from the date of receipt of the
international application and later than one year from the priority
date; or

(4) The designation fee in effect on the international filing date, if
the fee was due one month from the international filing date and after
one year from the priority date, and such fee is paid in full later than
one month from the date of receipt of the international application and
later than one year from the priority date.

(d) On filing the international application, in addition to specifying
at least one national or regional designation under PCT Rule 4.9(a),
applicant may also indicate under PCT Rule 4.9(b) that all other
designations permitted under the Treaty are made.

(1) Indication of other designations permitted by the Treaty under PCT
Rule 4.9(b) must be made in a statement on the Request that any
designation made under this paragraph is subject to confirmation (PCT
Rule 4.9(c)) not later than the expiration of 15 months from the
priority date by:

(i) Filing a written notice with the United States Receiving Office
specifying the national and/or regional designations being confirmed;

(ii) Paying the designation fee for each designation being confirmed; and

(iii) Paying the confirmation fee specified in    1.445(a)(4).

(2) Unconfirmed designations will be considered withdrawn. If the amount
submitted is not sufficient to cover the designation fee and the
confirmation fee for each designation being confirmed, the Receiving
Office will allocate the amount paid in accordance with any priority of
designations specified by applicant. If applicant does not specify any
priority of designations, the allocation of the amount paid will be made
in accordance with PCT Rule 16bis.1(c).

8. Section 1.435 is amended by revising paragraph (a) to read as follows:

   1.435 The description.

(a) The application must meet the requirements as to the content and
form of the description set forth in PCT Rules 5, 9, 10, and 11 and
sections 204 and 208 of the Administrative Instructions.

* * * * *

9. Section 1.445 is amended by revising paragraph (a) to read as follows:

   1.445 International application filing, processing and search fees.

(a) The following fees and charges for international applications are
established by the Commissioner under the authority of 35 U.S.C. 376:

(1) A transmittal fee (see 35 U.S.C. 361(d) and PCT Rule 14) . . . $240.00

(2) A search fee (see 35 U.S.C. 361(d) and PCT Rule 16):

(i) Where a corresponding prior United States National application filed
under 35 U.S.C. 111(a) with the filing fee under    1.16(a) has been
filed . . . 450.00

(ii) For all situations not provided for in paragraph (a)(2)(i) of this
section . . . 700.00

(3) A supplemental search fee when required, per additional invention . . .   
210.00

(4) A confirmation fee (PCT Rule 96) equal to fifty percent of the sum
of designation fees for the national and regional designations being
confirmed (   1.432(d)).

(5) A fee equivalent to the transmittal fee in paragraph (a)(1) of this
section for transmittal of an international application to the
International Bureau for processing in its capacity as a Receiving
Office (PCT Rule 19.4).

* * * * *

10. Section 1.451 is amended by revising paragraph (a) and adding a
paragraph (d) to read as follows:

   1.451 The priority claim and priority document in an international
application.

(a) The claim for priority must, subject to paragraph (d) of this
section, be made on the Request (PCT Rule 4.10) in a manner complying
with sections 110 and 115 of the Administrative Instructions.

* * * * *

(d) The applicant may correct or add a priority claim in accordance with
PCT Rule 26bis.1.

11. Section 1.461 is amended by revising paragraph (a) to read as
follows:

   1.461 Procedures for transmittal of record copy to the International
Bureau.

(a) Transmittal of the record copy of the international application to
the International Bureau shall be made by the United States Receiving
Office or as provided by PCT Rule 19.4.

* * * * *

12. Section 1.465 is amended by revising paragraphs (b) and (c) to read
as follows:

   1.465 Timing of application processing based on the priority date.

* * * * *

(b) When a claimed priority date is corrected or added under PCT Rule
26bis.1(a), or withdrawn under PCT Rule 90bis.3, or considered not to
have been made under PCT Rule 26bis.2, the priority date for the
purposes of computing any non-expired time limits will be the date of
the earliest valid remaining priority claim of the international
application, or if none, the international filing date.

(c) When corrections under PCT Art. 11(2), Art. 14(2) or PCT Rule
20.2(a) (i) or (iii) are timely submitted, and the date of receipt of
such corrections falls later than one year from the claimed priority
date or dates, the Receiving Office shall proceed under PCT Rule 26bis.2.
13. Section 1.471 is amended by revising paragraph (a) to read as
follows:

   1.471 Corrections and amendments during international processing.

(a) Except as otherwise provided in this paragraph, all corrections
submitted to the United States Receiving Office or United States
International Searching Authority must be in English, in the form of
replacement sheets in compliance with PCT Rules 10 and 11, and
accompanied by a letter that draws attention to the differences between
the replaced sheets and the replacement sheets. Replacement sheets are
not required for the deletion of lines of text, the correction of simple
typographical errors, and one addition or change of not more than five
words per sheet. These changes may be stated in a letter and, if
appropriate, the United States Receiving Office will make the deletion
or transfer the correction to the international application, provided
that such corrections do not adversely affect the clarity and direct
reproducibility of the application (PCT Rule 26.4).Amendments that do
not comply with PCT Rules 10 and 11.1 to 11.13 may not be entered.

14. Section 1.480 is amened by revising paragraph (a) to read as follows:

   1.480 Demand for international preliminary examination.

(a) On the filing of a proper Demand in an application for which the
United States International Preliminary Examining Authority is competent
and for which the fees have been paid, the international application
shall be the subject of an international preliminary examination. The
preliminary examination fee (   1.482(a)(1)) and the handling fee (  
1.482(b)) shall be due at the time of filing the Demand.

* * * * *

15. Section 1.481 is added to read as follows:

   1.481 Payment of international preliminary examination fees.
(a) The handling and preliminary examination fees shall be paid within
the time period set in PCT Rule 57.3. The handling fee or preliminary
examination fee payable is the handling fee or preliminary examination
fee in effect on the date of receipt of the Demand except under PCT Rule
59.3(a) where the fee payable is the fee in effect on the date of
arrival of the Demand at the United States International Preliminary
Examining Authority.

(1) If the handling and preliminary fees are not paid within the time
period set in PCT Rule 57.3, applicant will be notified and given one
month within which to pay the deficient fees plus a late payment fee
equal to the greater of:

(i) Fifty percent of the amount of the deficient fees, but not exceeding
an amount equal to double the handling fee; or

(ii) An amount equal to the handling fee (PCT Rule 58bis.2).

(2) The one-month time limit set in this paragraph to pay deficient fees
may not be extended.

(b) If the payment needed to cover the handling and preliminary
examination fees, pursuant to paragraph (a) of this section, is not
timely made in accordance with PCT Rule 58bis.1(d), the United States
International Preliminary Examination Authority will declare the Demand
to be considered as if it had not been submitted.

16. Section 1.484 is amened by revising paragraph (b) to read as follows:

   1.484 Conduct of international preliminary examination.

* * * * *

(b) International preliminary examination will begin promptly upon
receipt of a proper Demand in an application for which the United States
International Preliminary Examining Authority is competent, for which
the fees for international preliminary examination (   1.482) have been
paid, and which requests examination based on the application as filed
or as amended by an amendment which has been received by the United
States International Preliminary Examining Authority. Where a Demand
requests examination based on a PCT Article 19 amendment which has not
been received, examination may begin at 20 months without receipt of the
PCT Article 19 amendment.Where a Demand requests examination based on a
PCT Article 34 amendment which has not been received, applicant will be
notified and given a time period within which to submit the amendment.

(1) Examination will begin after the earliest of:

(i) Receipt of the amendment;

(ii) Receipt of applicant's statement that no amendment will be made; or

(iii) Expiration of the time period set in the notification. 

(2) No international preliminary examination report will be established
prior to issuance of an international search report.

* * * * *

17. Section 1.485 is amened by revising paragraph (a) to read as follows:

   1.485 Amendment by applicant during international preliminary
examination.

(a) The applicant may make amendments at the time of filing the Demand.
The applicant may also make amendments within the time limit set by the
International Preliminary Examining Authority for reply to any
notification under    1.484(b) or to any written opinion. Any such
amendments must:

(1) Be made by submitting a replacement sheet in compliance with PCT
Rules 10 and 11.1 to 11.13 for every sheet of the application which
differs from the sheet it replaces unless an entire sheet is cancelled;
and

(2) Include a description of how the replacement sheet differs from the
replaced sheet. Amendments that do not comply with PCT Rules 10 and 11.1
to 11.13 may not be entered.

* * * * *

18. Section 1.494 is amened by revising paragraph (c) to read as follows:

   1.494 Entering the national stage in the United States of America as
a Designated Office.

* * * * *

(c) If applicant complies with paragraph (b) of this section before
expiration of 20 months from the priority date but omits:

(1) A translation of the international application, as filed, into the
English language, if it was originally filed in another language (35
U.S.C. 371(c)(2)) and/or

(2) The oath or declaration of the inventor (35 U.S.C. 371(c)(4); see   
1.497), applicant will be so notified and given a period of time within
which to file the translation and/or oath or declaration in order to
prevent abandonment of the application. The payment of the processing
fee set forth in    1.492(f) is required for acceptance of an English
translation later than the expiration of 20 months after the priority
date. The payment of the surcharge set forth in    1.492(e) is required
for acceptance of the oath or declaration of the inventor later than the
expiration of 20 months after the priority date.A "Sequence Listing"
need not be translated if the "Sequence Listing" complies with PCT Rule
12.1(d) and the description complies with PCT Rule 5.2(b).

 * * * * *

19. Section 1.495 is amened by revising paragraph (c) to read as follows:

   1.495 Entering the national stage in the United States of America as
an Elected Office.

* * * * *

(c) If applicant complies with paragraph (b) of this section before
expiration of 30 months from the priority date but omits:

(1) A translation of the international application, as filed, into the
English language, if it was originally filed in another language (35
U.S.C. 371(c)(2)) and/or

(2) The oath or declaration of the inventor (35 U.S.C. 371(c)(4); see   
1.497), applicant will be so notified and given a period of time within
which to file the translation and/or oath or declaration in order to
prevent abandonment of the application. The payment of the processing
fee set forth in    1.492(f) is required for acceptance of an English
translation later than the expiration of 30 months after the priority
date. The payment of the surcharge set forth in    1.492(e) is required
for acceptance of the oath or declaration of the inventor later than the
expiration of 30 months after the priority date. A "Sequence Listing"
need not be translated if the "Sequence Listing" complies with PCT Rule
12.1(d) and the description complies with PCT Rule 5.2(b).

* * * * *

May 22, 1998                                                BRUCE A. LEHMAN
                                        Assistant Secretary of Commerce and
                                     Commissioner of Patents and Trademarks