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A national application **>as defined in 37 CFR 1.9(a)(1) includes an application entering the national stage from an international application after compliance with< 35 U.S.C. 371 **>and an< application filed under 35 U.S.C. 111(a).
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These applications are the result of an international application filed under the PCT entering the national stage in the United States. They are called national stage applications. The national stage application papers are placed in a domestic application file wrapper and the phrase "FILED UNDER 35 U.S.C. 371" is stamped on the front of the file wrapper. In addition, a "Notification of Acceptance of Application under 35 U.S.C. 371 and 37 CFR 1.494 or 1.495" (Form PCT/DO/EO/903) is placed in the file.
A typical time line involving an international and a national stage application is illustrated as follows:
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Although the illustrated time line is typical, there is no requirement that there be a priority application, nor is there any requirement that the national stage application be submitted after the international application is published.
National stage applications submitted under 35 U.S.C. 371 are treated differently in certain respects than national applications filed under 35 U.S.C. 111(a). Treatment of 35 U.S.C. 371 applications differs from treatment of 35 U.S.C. 111(a) applications as follows:
By virtue of 35 U.S.C. 363, the U.S. filing date of a national stage application is the international filing date (the filing date of the international application) for the purpose of determining whether information is prior art (i.e., has an effective date) relative to the invention claimed in the national stage application. The date which appears in the "filing date" box on the front of the file wrapper of a national stage application, however, is the date on which the requirements of 35 U.S.C. 371(c) were complied with, and typically is not the same as the international filing date of the application. The international filing date is the critical date for determining whether or not a particular reference is available as prior art against the application. The international filing date will appear next to the international application number in the CONTINUING DATA section on the file wrapper label and in the "Notification of Acceptance of Application under 35 U.S.C. 371 and 37 CFR 1.494 or 1.495" (Form PCT/DO/EO/903).
365(b) Priority In National Stage Application
The filing date of a national stage application is the international filing date. Pursuant to 35 U.S.C. 365(b), a priority claim under 35 U.S.C. 119(a) is proper if (a) a claim for priority was made in the international application, and (b) the application was filed within 12 months prior to the international filing date. See MPEP § 1893.03(c). The examiner should acknowledge the priority claim and priority document in the next Office action and on the file wrapper as in any 35 U.S.C. 119(a) situation, if appropriate.
In national stage applications, a photocopy of the foreign priority document is received from the International Bureau and placed in the national stage application file. This copy of the foreign priority document is sufficient to establish that applicant has filed a certified copy of the priority document. The copy received from the International Bureau bears a "WIPO" stamp. If a copy of the foreign priority document is not in the national stage application file, the examiner should consult with a Special Program Examiner in his or her Technology Center. A certified copy of a priority document filed as a U.S. provisional application ** under 35 U.S.C. 111(b) is not required in the U.S. national stage application because 37 CFR 1.55(a)(2) does not apply to priority claims under 35 U.S.C. 119(e).
Restriction practice in both international and national stage applications is determined under unity of invention principles as set forth in 37 CFR 1.475 and 1.499. Restriction practice under 35 U.S.C. 121, as it applies to national applications submitted under 35 U.S.C. 111(a), is not applicable to either international or national stage applications. However, a continuing application claiming benefit under 35 U.S.C. 365(c) to an international application or to a national stage application is not a national stage application and, therefore, the restriction practice under 35 U.S.C. 121 is applicable.
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>Revised 35 U.S.C. 102(e), as amended by the American Inventors Protection Act of 1999 (AIPA) (Pub. L. 106-113, 113 Stat. 1501 (1999)), and further amended by the Intellectual Property and High Technology Technical Amendments Act of 2002 (Pub. L. 107-273, 116 Stat. 1758 (2002)), allows the use of certain international application publications, certain U.S. patent application publications, and certain U.S. patents as prior art under 35 U.S.C. 102(e) as of their respective U.S. filing dates, including certain international filing dates. The prior art date of a reference under 35 U.S.C. 102(e) may be the international filing date if the international filing date was on or after November 29, 2000, the international application designated the U.S., and was published by the WIPO under the PCT Article 21(2) in the English language. See MPEP § 706.02(f)(1) for examination guidelines on the application of 35 U.S.C. 102(e).
If the potential reference resulted from, or claimed the benefit of, an international application, the following must be determined:
(A) If the international application meets the following three conditions:
(1) an international filing date on or after November 29, 2000;
(2) designated the United States; and
(3) published under PCT Article 21(2) in English,
the international filing date is a U.S. filing date for prior art purposes under 35 U.S.C. 102(e). If such an international application properly claims benefit to an earlier-filed U.S. or international application, or priority to an earlier-filed U.S. provisional application, apply the reference under 35 U.S.C. 102(e) as of the earlier filing date, assuming all the conditions of 35 U.S.C. 102(e), 119(e), 120, or 365(c) are met. Note, where the earlier application is an international application, the earlier international application must satisfy the same three conditions (i.e., filed on or after November 29, 2000, designated the U.S., and had been published in English under PCT Article 21(2)) for the earlier international filing date to be a U.S. filing date for prior art purposes under 35 U.S.C. 102(e).
(B) If the international application was filed on or after November 29, 2000, but did not designate the United States or was not published in English under PCT Article 21(2), do not treat the international filing date as a U.S. filing date for prior art purposes under 35 U.S.C. 102(e). In this situation, do not apply under 35 U.S.C. 102(e) the reference as of its international filing date, its date of completion of the 35 U.S.C. 371(c)(1), (2) and (4) requirements, or any earlier filing date to which such an international application claims benefit or priority. The reference may be applied under 35 U.S.C. 102(a) or (b) as of its publication date, or 35 U.S.C. 102(e) as of any later U.S. filing date of an application that properly claimed the benefit of the international application (if applicable).
(C) If the international application has an international filing date prior to November 29, 2000, apply the reference under the provisions of 35 U.S.C. 102 and 374, prior to the AIPA amendments:
(1) For U.S. patents, apply the reference under 35 U.S.C. 102(e) as of the earlier of the date of completion of the requirements of 35 U.S.C. 371(c)(1), (2) and (4) or the filing date of the later-filed U.S. application that claimed the benefit of the international application;
(2) For U.S. application publications and WIPO publications directly resulting from international applications under PCT Article 21(2), never apply these references under 35 U.S.C. 102(e). These references may be applied as of their publication dates under 35 U.S.C. 102(a) or (b);
(3) For U.S. application publications of applications that claim the benefit under 35 U.S.C. 120 or 365(c) of an international application filed prior to November 29, 2000, apply the reference under 35 U.S.C. 102(e) as of the actual filing date of the later-filed U.S. application that claimed the benefit of the international application.
Examiners should be aware that although a publication of, or a U.S. patent issued from, an international application may not have a 35 U.S.C. 102(e) date at all, or may have a 35 U.S.C. 102(e) date that is after the effective filing date of the application being examined (so it is not "prior art"), the corresponding WIPO publication of an international application may have an earlier 35 U.S.C. 102(a) or (b) date.<
The International Publication Number and the Publication Date MUST be in the national stage application if the application is allowed. The International Publication Number and the Publication date can be found in the DO/US Worksheet WIPO Publication block. If the Publication Number and the Publication date are not found on the worksheet or if the worksheet is missing, the information may be taken either from the International Publication or the PCT Gazette page. The examiner should ensure that the International Publication Number and the Publication date are in one of these three locations before the application is sent to Office of Patent Publication.
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Rather than filing a national stage application, a continuing application (i.e., continuation, C-I-P, or division) under 35 U.S.C. 111(a) of the international application may be filed. Pursuant to 35 U.S.C. 365(c), a regular national application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b) (not under 37 CFR 1.53(d) or former 37 CFR 1.60 or 1.62) may claim benefit of the filing date of an international application which designates the United States.
A typical time line involving a continuing application filed during the pendency of an international application is illustrated as follows:
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The continuing application must be filed before the international application becomes abandoned as to the U.S. as set forth in 37 CFR ** 1.495. **>The specific reference to the international application required under 35 U.S.C. 120 must appear either in the first sentence of the specification or in an application data sheet. 37 CFR 1.78(a)(2). An example of an appropriate first sentence of the specification is, for example, "This is a continuation of International Application PCT/EP90/00000, with an international filing date of January 4, 1990, now abandoned."< In addition, all other conditions of 35 U.S.C. 120 (such as having at least one common inventor) must be satisfied. A copy of the international application (and an English translation) may be required by the examiner to perfect the claim for benefit under 35 U.S.C. 120 and 365(c) if necessary, for example, where an intervening reference is found and applied in a rejection of one or more claims.
A claim for foreign priority under 35 U.S.C. 119(a)-(d) must be made in the continuing application in the same manner as a claim for foreign priority under 35 U.S.C. 365(b) in a national stage application. In the same manner as with a national stage application, a foreign priority claim is proper if (1) a claim for foreign priority was made in the international application, and (2) the foreign application was filed within 12 months prior to the international filing date. A certified copy of any foreign priority document must be provided by the applicant if the parent international application has not entered the national stage under 35 U.S.C. 371 (the photocopy received from the International Bureau cannot be used). If the parent international application has entered the national stage under 35 U.S.C. 371, the applicant, in the continuing application, may state that the priority document is contained in the national stage application.
>An application filed under 35 U.S.C. 111(a) may make a claim for foreign priority under 35 U.S.C. 119 (a)-(d) and 365(a) to an international application which designates at least one country other than the United States (the U.S. may also be designated). In this situation, applicant must file a certified copy of the international application in the application filed under 35 U.S.C. 111(a) and the applicant must satisfy all other requirements of 35 U.S.C. 119(a)-(d). A typical time line for this situation is illustrated as follows:
The examiner should acknowledge the priority claim and priority document in the next Office action and on the file wrapper as in any 35 U.S.C. 119(a)-(d) situation, if appropriate.
>If the priority claim to an earlier international application is made only under 35 U.S.C. 119(a)-(d) and 365(a), and not under 35 U.S.C. 120 and 365(c), the priority claim is not taken into account when determining the term of the patent. See 35 U.S.C. 154(a)(3) and MPEP § 2701.<
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