201.01   National Applications [R-11.2013]

35 U.S.C. 111   Application.

  • (a) IN GENERAL.—

    • (1) WRITTEN APPLICATION.—An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Director.
    • (2) CONTENTS.—Such application shall include—
    • (3) FEE AND OATH.—The application must be accompanied by the fee required by law. The fee and oath or declaration may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
    • (4) FAILURE TO SUBMIT.—Upon failure to submit the fee and oath within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee and oath was unavoidable or unintentional. The filing date of an application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.
  • (b) PROVISIONAL APPLICATION.—

    • (1) AUTHORIZATION.—A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include—

      • (A) a specification as prescribed by the first paragraph of section 112(a); and
      • (B) a drawing as prescribed by section 113.
    • (2) CLAIM.—A claim, as required by subsections (b) through (e) of section 112, shall not be required in a provisional application.
    • (3) FEE.—

      • (A) The application must be accompanied by the fee required by law.
      • (B) The fee may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
      • (C) Upon failure to submit the fee within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee was unavoidable or unintentional.

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37 C.F.R. 1.9 (pre-AIA)  Definitions.

  • (a)
    • (1) A national application as used in this chapter means a U.S. application for patent which was either filed in the Office under 35 U.S.C. 111, or an international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F)  has been paid.
    • (2) A provisional application as used in this chapter means a U.S. national application for patent filed in the Office under 35 U.S.C. 111(b).
    • (3) A nonprovisional application as used in this chapter means a U.S. national application for patent which was either filed in the Office under 35 U.S.C. 111(a), or an international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F)  has been paid.
  • (b) An international application as used in this chapter means an international application for patent filed under the Patent Cooperation Treaty prior to entering national processing at the Designated Office stage.

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37 C.F.R. 1.9 (pre-AIA)  Definitions

  • (a)
    • (1) A national application as used in this chapter means a U.S. application for patent which was either filed in the Office under 35 U.S.C. 111, or which entered the national stage from an international application after compliance with 35 U.S.C. 371.
    • (2) A provisional application as used in this chapter means a U.S. national application for patent filed in the Office under 35 U.S.C. 111(b).
    • (3) A nonprovisional application as used in this chapter means a U.S. national application for patent which was either filed in the Office under 35 U.S.C. 111(a), or which entered the national stage from an international application after compliance with 35 U.S.C. 371.
  • (b) An international application as used in this chapter means an international application for patent filed under the Patent Cooperation Treaty prior to entering national processing at the Designated Office stage.

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I.   APPLICATIONS FILED UNDER 35 U.S.C. 111

Applications filed under 35 U.S.C. 111(a) include original nonprovisional utility, plant, design, divisional, continuation, and continuation-in-part applications filed under 37 CFR 1.53(b), reissue applications filed under 37 CFR 1.53(b), and design patent continued prosecution applications (CPAs) filed under 37 CFR 1.53(d).

For details regarding reissue, design, and plant patent applications, see MPEP Chapters 1400, 1500, and 1600, respectively. For details regarding divisional, continuation, and continuation-in-part applications, see MPEP §§ 201.06 et seq., 201.07, and 201.08, respectively. See MPEP § 201.06(d) for a discussion of continued prosecution applications filed under 37 CFR 1.53(d).

Applications filed under 35 U.S.C. 111(b) are provisional applications for patent and are filed under 37 CFR 1.53(c). Significant differences between nonprovisional applications filed under 35 U.S.C. 111(a) and provisional applications filed under 35 U.S.C. 111(b) include the following:

    • (A) No claim is required in a provisional application.
    • (B) No oath or declaration is required in a provisional application.
    • (C) Provisional applications will not be examined for patentability.
    • (D) A provisional application is not entitled to claim priority to any foreign application or the benefit of any earlier filed national application.
    • (E) A design patent application is not entitled to claim the benefit of a provisional application (See 35 U.S.C. 172).

See MPEP § 201.04 for detailed information regarding provisional applications.

Domestic national applications include original (nonprovisional), provisional, plant, design, reissue, divisional, and continuation applications (which may be filed under 37 CFR 1.53(b)), continued prosecution applications (CPA) (filed under 37 CFR 1.53(d), only applicable if the application is for a design patent) and continuation-in-part applications (which may be filed under 37 CFR 1.53(b)).

II.   INTERNATIONAL APPLICATION DESIGNATING THE UNITED STATES

35 U.S.C. 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 and Trademark Office.

For applications filed on or after September 16, 2012, 37 CFR 1.9(a)(1) defines a national application as a U.S. application which was either filed in the Office under 35 U.S.C. 111, or an international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F)  has been paid.

For applications filed prior to September 16, 2012, pre-AIA 37 CFR 1.9(a)(1) defines a national application as a U.S. application which was either filed in the Office under 35 U.S.C. 111, or which entered the national stage from an international application after compliance with 35 U.S.C. 371.

Note that 37 CFR 1.9(b) defines an international application for patent as one filed under the Patent Cooperation Treaty prior to entering national processing at the Designated Office stage.

Treatment of a national application under 35 U.S.C. 111 and a national stage application (a national application which entered the national stage from an international application in which the conditions of 37 CFR 1.9(a)(1) or pre-AIA 37 CFR 1.9(a)(1) have been satisfied) are similar but not identical.

See MPEP §§ 1893.03 et seq. for examination of international applications in the national stage, and MPEP § 1896 for a description of the differences between a nonprovisional application filed under 35 U.S.C. 111(a) and an international application filed under the Patent Cooperation Treaty that entered the national stage. Note in particular the following examples:

    • (A) Restriction practice as explained in MPEP § 806 et seq. is applied to national applications under 35 U.S.C. 111(a) while unity of invention practice as explained in MPEP §§ 1850 and 1893.03(d) is applied to national stage applications.
    • (B) National nonprovisional applications filed under 35 U.S.C. 111(a) without an executed oath or declaration, basic filing fee, search fee, or examination fee are governed by the notification practice set forth in 37 CFR 1.53(f) while incomplete national stage applications are governed by the notification practice set forth in 37 CFR 1.495.