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It is possible to file a U.S. national application under 35 U.S.C. 111(a) during the pendency (prior to the abandonment) of an international application which designates the United States without completing the requirements for entering the national stage under 35 U.S.C. 371(c). The ability to take such action is based on provisions of the United States patent law. 35 U.S.C. 363 provides that "[a]n 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 and Trademark Office...." 35 U.S.C. 371(d) indicates that failure to timely comply with the requirements of 35 U.S.C. 371(c) "shall be regarded as abandonment ... by the parties thereof...." It is therefore clear that an international application which designates the United States has the effect of a pending U.S. application from the international application filing date until its abandonment as to the United States. The first sentence of 35 U.S.C. 365(c) specifically provides that "[i]n accordance with the conditions and requirements of section 120 of this title, ... a national application shall be entitled to the benefit of the filing date of a prior international application designating the United States." The condition of 35 U.S.C. 120 relating to the time of filing requires the later application to be filed before the patenting or abandonment of or termination of proceedings on the first application. The filing of continuations and continuations-in-part of **>an international (PCT)< application designating the U.S. was used primarily in instances where there was difficulty in obtaining a signed oath or declaration by the expiration of the time for entry into the national stage. >Because these continuation and continuation-in-part applications historically resulted from a need to bypass the requirements of 35 U.S.C. 371, they became known as "bypass" applications.< Since applicants are now notified of missing or defective oaths or declarations and/or translations, and are given a time period to respond which is extendable under 37 CFR 1.136(a), the use of this practice **>has diminished<.
A continuing application under 35 U.S.C. 365(c) and 120 must be filed before the abandonment or patenting of the prior application.
To obtain benefit under 35 U.S.C. 120 of a prior PCT application designating the U.S., the continuing U.S. national application must
(A) include an appropriate reference to the prior PCT application (either in the application data sheet (37 CFR 1.76) or in the first sentence of the specification),
**>(B) < be copending with the prior PCT application, and
*>(C) < have at least one inventor in common with the prior PCT application.
See MPEP § 201.11. A U.S. national application is copending with an international application >(PCT)< if the prior international application was pending on the filing date of the subsequent U.S. national application.
If the prior application is an international application, the examiner must ascertain *>(B)< and *>(C)< above by either examining the national stage application file of the international application, or by examining the international application file, or requiring applicant to submit sufficient *>evidence to prove< that the international application was copending with the U.S. national ( 35 U.S.C. 111(a)) application claiming benefit under 35 U.S.C. 120. >The evidence submitted to prove that the international application was copending with the U.S. national (35 U.S.C. 111(a)) application should include a certification from applicant that neither the international application nor the designation of the United States was withdrawn or considered to be withdrawn prior to the filing date of the U.S. national (35 U.S.C. 111(a)) application. Additionally, if the 20 month period from the priority date of the international application expired before April 1, 2002 and the U.S. national (35 U.S.C. 111(a)) application was filed later than 20 months from the priority date of the international application, the evidence should also include proof of filing a demand electing the United States within 19 months from the priority date. The proof of filing the demand may be in the form of a copy of the "Notification of Receipt of Demand by Competent International Preliminary Examining Authority" (Form PCT/IPEA/402) showing that the demand was received prior to the expiration of 19 months from the priority date, and a copy of the "Notification Concerning Elected Offices Notified of Their Election" (Form PCT/IB/332) showing the election of the United States.)< If the parent international application was not copending (i.e., abandoned or withdrawn), benefit under 35 U.S.C. 120 is not possible.
If *>benefit< is claimed under 35 U.S.C. >119(e) or< 120 in a third U.S. national application to a first national or international application via a second international application, the examiner must examine the second international application to see if it contains a proper reference **>to the first national or international application. The reference will usually be included on the cover page of the published international application, and it sometimes also appears in the first sentence of the description of the published application. A lack of a proper reference in the published international application does not necessarily mean that a proper reference is not contained in the second international application. Accordingly, the examiner may need to inspect the international application file to determine whether the requirements under 37 CFR 1.78(a) have been satisfied. For example, a decision granting a petition to accept a late benefit claim may be present in the application file.< The appropriate reference **>under 35 U.S.C. 120 must< identify the parent application >by application number (consisting of the series code and serial number) or international application number and international filing date (see 37 CFR 1.78(a)(2)(i))< and include an indication that it is a continuation or continuation-in-part of the first filed U.S. application **(PCT Rule 4.14). The appropriate reference under 35 U.S.C. 120 must identify the parent application by application number (consisting of the series code and serial number) or international application number and international filing date. See 37 CFR 1.78(a)(2)(i). The appropriate reference under 35 U.S.C. 119(e) must identify the provisional application by provisional application number (consisting of series code and serial number). See 37 CFR 1.78(a)(5)(i).<
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