1896 The Differences Between a National Application Filed Under 35 U.S.C. 111(a) and a National Stage Application Submitted Under 35 U.S.C. 371 [R-6]
The following section describes the differences between a U.S. national application filed under 35 U.S.C. 111(a) , including those claiming benefit of a PCT application under 35 U.S.C. 120 (a continuation, division, or a continuation-in-part of a PCT application), and a U.S. national stage application (submitted under 35 U.S.C. 371 ).
| National Applications (filed under 35 U.S.C. 111(a) ) | National Stage Applications (submitted under 35 U.S.C. 371 ) | |
|---|---|---|
| Filing Date | Deposit date in USPTO of specification, claim and any necessary drawing | International filing date of PCT application |
| Date application was "filed in the United States" for prior art purposes under 35 U.S.C. 102(e) | See MPEP § 706.02(f)(1) | See MPEP §§ 706.02(f)(1) , 1857.01 , and 1895.01 |
| 35 U.S.C. 119(a) -(d) Priority Requirement | Certified copy provided by applicant or copy of priority document provided by a foreign office in accordance with 37 CFR 1.55(d) | Copy of certified copy provided by WIPO or same as in a 35 U.S.C. 111(a) filing |
| Unity of Invention | U.S. restriction practice under 37 CFR 1.141-1.146 | Unity of invention practice under 37 CFR 1.499 |
| Filing Fees | 37 CFR 1.16 | 37 CFR 1.492 |
| Reference to Application in Declaration | Attached application, U.S. Application No., etc. | Same as in a 35 U.S.C. 111(a) filing or may refer to the international application |
| Copendency with International Application | Applicant provides proof | Not an issue |
The differences between a national application filed under 35 U.S.C. 111(a) and a national application submitted under 35 U.S.C. 371 are often subtle, but the differences are important.
I. FILING DATE
The filing date of a 35 U.S.C. 111(a) application is the date when the USPTO receives a specification as prescribed by 35 U.S.C. 112 containing a description and at least one claim, and any required drawings. See 37 CFR 1.53(b) .
The filing date of a PCT international application is the date applicant satisfies Article 11 requirements, i.e., includes a description, a claim, names at least one applicant who is a resident or national of a PCT Contracting State, filed in the prescribed language, and designates at least one Contracting State. See MPEP § 1810 . By virtue of 35 U.S.C. 363 , the U.S. filing date of an international application that designates the United States is, for most legal purposes, the international filing date. See MPEP § 1893.03 (b).
II. EFFECTIVE DATE AS A REFERENCE
A reference under 35 U.S.C. 102 (e) must be a U.S. patent, a U.S. application publication (35 U.S.C. 122 (b)), or a WIPO publication of an international application under PCT Article 21 (2).
References That Did Not Result From, Nor Claimed Benefit of, an International Application
The 35 U.S.C. 102 (e) date of a reference that did not result from, nor claimed the benefit of, an international application is its earliest effective U.S. filing date, taking into consideration any proper priority or benefit claims to prior U.S. applications under 35 U.S.C. 119 (e) or 120 if the prior application(s) properly support(s) the subject matter used to make the rejection. See MPEP § 706.02(a) .
References That Resulted From, or Claimed Benefit of, an International Application
If a 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 purposed 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.
In a U.S. national application filed under 35 U.S.C. 111 (a), the certified copy of the foreign priority application must be provided to the Office by applicant, or a copy of the foreign application must be received from a foreign office in accordance with 37 CFR 1.55 (d). Where applicant filed an international application claiming priority to an earlier filed national application, the certified copy of the priority application may be provided to the International Bureau by applicant during the international stage. The International Bureau (WIPO) sends a copy of the certified copy of the priority application to each designated office that has requested to receive such documents. Upon receipt of applicant’s submission to enter the U.S. national stage, the USPTO will request from WIPO a copy of the certified priority document submitted in the international stage. Upon receipt of the priority document, the USPTO will scan the document into the image file wrapper of the national stage application. The copy of the certified copy of the priority document received from WIPO will have either the first page stamped by WIPO to indicate that it is a priority document received by WIPO and the date of such receipt, or it will be accompanied by a cover sheet containing such information. See MPEP § 1893.03(c) . Such a *>copy is acceptable in a U.S. national stage application to establish that applicant has filed a certified copy of the priority document. If the *>copy is missing from the national stage application file, either the document has been misplaced or it was not provided due to a defect in priority during the international stage. If the priority claim was not in accordance with PCT Rule 4.10 or the priority document was not provided in accordance with PCT Rule 17 , the copy of the priority document will not have been provided by the International Bureau. If a copy of the foreign priority document is not in the national stage application file but applicant asserts that a certified copy of the priority document was timely furnished under PCT Rule 17 in the international phase, then the examiner should consult with a Special Program Examiner in his or her Technology Center or a PCT Special Program Examiner.
IV. UNITY OF INVENTION
U.S. national applications filed under 35 U.S.C. 111(a) are subject to restriction practice in accordance with 37 CFR 1.141 -1.146. See MPEP § 803 . U.S. national stage applications (which entered the national stage from international applications after compliance with 35 U.S.C. 371 ) are subject to unity of invention practice in accordance with 37 CFR 1.475 and 1.499 (effective May 1, 1993).
V. FILING FEES
U.S. national applications filed under 35 U.S.C. 111(a) are subject to the national application filing fees set forth at 37 CFR 1.16 . Submissions to enter the U.S. national stage under 35 U.S.C. 371 are subject to the national stage fees prescribed at 37 CFR 1.492 .
VI. REFERENCE TO APPLICATION IN DECLARATION
Applicant’s oath or declaration is required to identify the specification to which it is directed ( 37 CFR 1.63(b) (1) and 1.497 (a)(2) ). The specification may be identified in a U.S. national application filed under 35 U.S.C. 111(a) by reference to an attached specification or by reference to the application number and filing date of a specification previously filed in the Office. MPEP § 601.01(a) gives the minimum requirements for identification of the specification. Submissions to enter the U.S. national stage under 35 U.S.C. 371 may identify the specification (in the oath or declaration) in the same manner as applications filed under 35 U.S.C. 111(a) or may identify the specification by reference to the international application number .