Patent Law FAQ

For international applications and applications claiming the benefit of a published international application:

1. If the United States is indicated as a Designated State, status information is available for the national stage application and any application claiming benefit of the filing date of the published international application.
2. Only the serial number, filing date, application number, and whether the application is pending, abandoned, or patented may be provided.
3. A copy of the first page of the published international application or the corresponding page of the PCT Gazette must be supplied with the status request.

Status requests should be made in writing to the International Patent Legal Administration or directed to the PCT Help desk.

According to MPEP 102, for national stage applications or applications claiming the benefit of a published international application:

“Only the serial number and filing date, or application number, as well as whether the application is pending, abandoned, or patented may be given for the national stage application and for any applications claiming the benefit of the filing date of the referenced published international application. Other information contained on the continuity data screen, such as whether the application is a CIP, continuation or divisional application, the date of abandonment of the application and issue date may be confidential information and should not be communicated.”

To request this information, a copy of the first page of the published international application or the corresponding page of the PCT Gazette must be supplied with the status request to the International Patent Legal Administration.

For more information on international applications, visit: international applications.

For more information on status information, visit: status information.

In general, status information cannot be provided for unpublished patent applications, unless the requester is:

1. The applicant
2. A patent practitioner of record
3. The assignee or an assignee of an undivided part interest
4. The inventor or a joint inventor
5. A registered attorney or agent named in the application papers

Alternatively, a person with written authority from any of the above parties can be provided status information.

There are some exceptions where status information can be supplied for unpublished applications, such as:

• When the application is identified in a published patent document or another application publication
• When the application is a national stage application or claims benefit to a published international application and the US is a designated state
• When the application is an international design application maintained by the USPTO for national processing

Access to international application files at the USPTO is governed by specific rules. According to MPEP 103:

‘International applications that designate the U.S. and have been published in accordance with PCT Article 21(2) are generally open to public inspection and copying.’

This means:

• Published international applications designating the U.S. are accessible
• Access is available after the application’s international publication
• Unpublished international applications are not open to public inspection

To access these files, you can use the USPTO’s Public PAIR system or visit the USPTO’s Public Search Facility.

For more information on international applications, visit: international applications.

For more information on public inspection, visit: public inspection.

The United States Patent and Trademark Office (USPTO) has specific procedures for maintaining the confidentiality of international applications filed in the U.S. According to MPEP 110, which references 35 U.S.C. 368, International applications filed in the Patent and Trademark Office shall be subject to the provisions of chapter 17. This means that such applications are subject to the same secrecy provisions as regular U.S. patent applications. Additionally, If a license to file in a foreign country is refused or if an international application is ordered to be kept secret and a permit refused, the Patent and Trademark Office when acting as a Receiving Office, International Searching Authority, or International Preliminary Examining Authority, may not disclose the contents of such application to anyone not authorized to receive such disclosure. This ensures that sensitive information in international applications is protected in accordance with U.S. law.

For more information on international applications, visit: international applications.

For more information on USPTO, visit: USPTO.

A Secrecy Order significantly impacts the prosecution of a patent application. According to 37 CFR 5.3:

Unless specifically ordered otherwise, action on the application by the Office and prosecution by the applicant will proceed during the time an application is under secrecy order to the point indicated in this section.

Key effects include:

• Applications under final rejection must be appealed or prosecuted to avoid abandonment, but appeals won’t be set for hearing until the Secrecy Order is removed.
• Interferences or derivation proceedings won’t be instituted for applications under Secrecy Order.
• When the application is in condition for allowance, the applicant and the relevant agency will be notified, but no notice of allowance will be issued until the Secrecy Order is removed.
• International applications under Secrecy Order won’t be transmitted to international authorities or the applicant.

These restrictions ensure that sensitive information remains protected while allowing some progress in the application process.

For more information on international applications, visit: international applications.

For more information on patent prosecution, visit: patent prosecution.

MPEP 201.01 distinguishes between national applications and international applications:

• National applications are filed directly with the USPTO under 35 U.S.C. 111(a) or enter the national stage from an international application after complying with 35 U.S.C. 371.
• International applications are filed under the Patent Cooperation Treaty (PCT).

The MPEP states: The term ‘national application’ as used in this title refers to a U.S. national 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. (MPEP 201.01)

International applications become national applications when they enter the national stage in a specific country, such as the United States. This process involves meeting the requirements of 35 U.S.C. 371.

For more information on international applications, visit: international applications.

For more information on national stage entry, visit: national stage entry.

There are three main types of national applications for patents in the United States:

• Nonprovisional applications filed under 35 U.S.C. 111(a)
• Provisional applications filed under 35 U.S.C. 111(b)
• International applications that have entered the national stage in the United States

As stated in MPEP 201.01: “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 more information on international applications, visit: international applications.

For more information on nonprovisional applications, visit: nonprovisional applications.

Claiming the benefit of an international application (PCT application) in a U.S. national application has specific requirements. The MPEP states:

“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) may claim the benefit of the filing date of an international application which designates the United States without completing the requirements for entering the national stage under 35 U.S.C. 371.”

Requirements for claiming benefit of an international application:

• The international application must designate the United States
• The international application must be entitled to a filing date in accordance with PCT Article 11
• The later-filed U.S. application must be filed during the pendency of the international application
• The U.S. application can be filed as a continuation, divisional, or continuation-in-part of the international application (often called a “bypass” application)

This allows applicants to claim the benefit of an international application’s filing date without completing the national stage entry process under 35 U.S.C. 371.

There are several types of patent applications in the United States:

• Nonprovisional applications filed under 35 U.S.C. 111(a), including utility, plant, and design patent applications
• Provisional applications filed under 35 U.S.C. 111(b)
• International applications filed under the Patent Cooperation Treaty (PCT)
• International design applications filed under the Hague Agreement

The MPEP states: 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 more information on Hague Agreement, visit: Hague Agreement.

For more information on international applications, visit: international applications.

For more information on nonprovisional applications, visit: nonprovisional applications.

For more information on patent applications, visit: patent applications.

According to MPEP 201.02, there are several types of patent applications:

• National applications
• Provisional applications
• Nonprovisional applications
• International applications
• International design applications

The definitions for these terms can be found in 37 CFR 1.9. Additionally, applications can be classified as ‘original’ or ‘continuing’ applications. An original application may be a first filing or a continuing application, while a continuing application can be a continuation, divisional, or continuation-in-part application.

For more information on continuing applications, visit: continuing applications.

For more information on international applications, visit: international applications.

For more information on international design applications, visit: international design applications.

For more information on nonprovisional applications, visit: nonprovisional applications.

For more information on patent applications, visit: patent applications.

For status inquiries regarding PCT applications, the MPEP provides specific guidance:

• Inquiries relating to international applications filed under the Patent Cooperation Treaty (PCT) should be directed to the PCT Help Desk.
• The MPEP states: Inquiries relating to international applications (PCT) … should be directed to the PCT Help Desk at 1-800-PTO-9199 or 571-272-4300.
• The PCT Help Desk can provide information on the processing of international applications at the United States Receiving Office (RO/US), United States International Searching Authority (ISA/US), and United States International Preliminary Examining Authority (IPEA/US).

It’s important to use the correct channel for PCT-related inquiries to ensure accurate and timely information.

To learn more:

• PCT applications
• international applications
• PCT Help Desk

The priority claim deadline for PCT applications entering the national stage in the U.S. differs from that of regular U.S. patent applications:

• PCT National Stage Applications: For these applications, the priority claim must be made within the time limit set in the PCT and the Regulations under the PCT.
• Regular U.S. Applications: The deadline is the later of four months from the actual U.S. filing date or sixteen months from the foreign priority date.

According to MPEP 214.01: “In an application that entered the national stage from an international application after compliance with 35 U.S.C. 371, the claim for priority must be made during the pendency of the application and within the time limit set forth in the PCT and the Regulations under the PCT.”

It’s crucial to understand these differences to ensure timely filing of priority claims in different application types.

To learn more:

• PCT applications
• national stage
• priority claim deadline
• international applications

The Patent Cooperation Treaty (PCT) significantly impacts international patent applications. According to MPEP 213.01:

International applications filed under the Patent Cooperation Treaty (PCT) are considered to have been filed in any PCT contracting state of which the United States is one.

This means that a PCT application effectively serves as a placeholder for potential national phase entries in all PCT member countries. It provides applicants with additional time to decide in which countries they want to pursue patent protection, while securing an early filing date.

To learn more:

• PCT
• international applications
• patent filing strategy

An international application designating the United States has significant effects on the application process:

• It is treated as a national application from its international filing date.
• It follows different rules for restriction practice and unity of invention.
• It has different notification procedures for incomplete applications.

According to 35 U.S.C. 363: “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.”

However, as noted in MPEP 201.01: “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) have been satisfied) are similar but not identical.” For example, unity of invention practice applies to national stage applications, while restriction practice applies to applications filed under 35 U.S.C. 111(a).

For more information on international applications, visit: international applications.

An international application designating the United States has significant effects on national patent rights. According to 35 U.S.C. 363:

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.

This means that an international application (PCT application) that designates the US is treated similarly to a national application filed under 35 U.S.C. 111. However, there are some differences in treatment between national applications and national stage applications (which enter the national stage from an international application). For example:

• Restriction practice applies to national applications, while unity of invention practice applies to national stage applications
• Different notification practices apply to incomplete applications in each case

For detailed information on the examination of international applications in the national stage, refer to MPEP § 1893.03.

For more information on international applications, visit: international applications.

For more information on patent rights, visit: patent rights.

35 U.S.C. 365 addresses the right of priority for international applications in two key aspects:

1. National applications based on international applications
2. International applications based on foreign applications

The MPEP states:

“35 U.S.C. 365(a) provides that a national application shall be entitled to the right of priority based on a prior international application of whatever origin, which designated any country other than, or in addition to, the United States.”

“35 U.S.C. 365(b) provides that an international application designating the United States shall be entitled to the right of priority of a prior foreign application which may either be another international application or a regularly filed foreign application.”

These provisions ensure that applicants can claim priority based on international applications, enhancing the flexibility of the international patent system.

Delayed benefit claims in international applications have specific procedures. According to MPEP 211.04:

A petition under 37 CFR 1.78 for accepting an unintentionally delayed benefit claim and the petition fee under 37 CFR 1.17(m) are required to add a benefit claim under 35 U.S.C. 120 and 365(c) in an abandoned international application designating the United States, even when the international application did not enter the national stage under 35 U.S.C. 371.

For international applications not filed with the U.S. Receiving Office and not a nonprovisional application, the petition may be filed in the earliest nonprovisional application claiming benefit to the international application. This petition will be treated as if filed in the international application itself.

For more information on international applications, visit: international applications.

For more information on patent procedure, visit: patent procedure.

According to 37 CFR 1.9(a)(1), a national application is defined as:

• A U.S. application for patent filed in the USPTO under 35 U.S.C. 111
• 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
• An international design application filed under the Hague Agreement in which the USPTO has received a copy of the international registration pursuant to Hague Agreement Article 10

This definition encompasses various types of patent applications that are treated as national applications by the USPTO.

A ‘bypass’ application is:

• A regular national application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b)
• It claims benefit of an international application’s filing date without entering the national stage under 35 U.S.C. 371
• It can be filed as a continuation, divisional, or continuation-in-part of the international application

MPEP 211.01(c) explains: “Rather than submitting a national stage application under 35 U.S.C. 371, applicant may file a continuation, divisional, or continuation-in-part of an international (PCT) application under 35 U.S.C. 111(a). Such applications are often referred to as ‘bypass’ applications.”

The Patent Law Treaties Implementation Act (PLTIA) of 2012 introduced several important changes to US patent law, particularly regarding priority claims and international applications. Key changes include:

• Restoration of the right of priority to a foreign application or the benefit of a provisional application in certain cases
• Ability to file international design applications
• Ability to claim priority to, and benefit of, international design applications in nonprovisional applications

The MPEP states: “Notable changes to the law and rules included the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications) for filing such a subsequent application. In addition, title I of the PLTIA became effective May 13, 2015, along with corresponding revisions to the rules. Notable changes included the ability to file international design applications and to claim priority to, and the benefit of, international design applications in nonprovisional applications.”

The requirements for claiming benefit of an earlier national application under 37 CFR 1.78 include:

• A specific reference to the earlier-filed application in the later-filed application
• For applications filed on or after September 16, 2012, the specific reference must be in the application data sheet (ADS)
• For applications filed before September 16, 2012, the specific reference must be in the ADS or in the first sentence(s) of the specification
• Meeting time requirements for filing the benefit claim
• In some cases, providing a statement regarding the effective filing date of claims

The MPEP states: “Whether an application was filed before, on, or after March 16, 2013, statutory provisions require that for a later-filed application to be entitled to the benefit of an earlier-filed national application, the later-filed application must contain a specific reference to the earlier-filed application.”

The Patent Cooperation Treaty (PCT) system interacts with foreign priority claims in several important ways:

1. Priority claims in PCT applications:
– PCT applications can claim priority to earlier foreign applications under the Paris Convention.
– The priority period is 12 months from the earliest priority date.

2. PCT as a basis for priority:
– A PCT application can serve as the basis for a priority claim in a later-filed national or regional application.

3. Effect on time limits:
– The 30-month time limit for entering the national phase is calculated from the priority date (if claimed) or the PCT filing date if no priority is claimed.

4. Restoration of priority rights:
– The PCT system allows for restoration of priority rights if an international application is filed within 14 months of the priority date and the delay was unintentional.

5. Certified copies:
– The PCT system has provisions for providing certified copies of priority documents to designated offices.

As stated in MPEP 213.06: “In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT.”

The PCT system provides a streamlined process for seeking patent protection internationally while preserving priority rights, but applicants must be aware of the specific requirements and time limits within the PCT system.

For international applications, 37 CFR 1.57(b)(1) specifies:n

n
• Any amendment will only be effective as to the United States and shall have no effect on the international filing date

n

• It cannot be relied upon to accord an international filing date or alter the filing date under PCT Article 11

n

• No request to add omitted material will be acted on prior to national stage entry under 37 CFR 1.491 or filing of a US application claiming benefit of the international application

n

Claiming priority to a PCT international application can be done in two ways:

1. In a U.S. national stage application under 35 U.S.C. 371:
   • The priority claim is made in the PCT application
   • No further action is needed when entering the national stage
2. In a U.S. nonprovisional application under 35 U.S.C. 111(a):
   • File within 12 months of the PCT filing date
   • Make the priority claim in an application data sheet
   • Provide a certified copy of the PCT application (unless already filed with the PCT)

In both cases, the PCT application must designate the United States. The specific requirements are detailed in 37 CFR 1.55(d)(2) and (f)(2) for national stage applications, and 37 CFR 1.55(d)(1) and (f)(1) for applications under 35 U.S.C. 111(a).

MPEP 201.01 distinguishes between national applications and international applications:

• National applications are filed directly with the USPTO under 35 U.S.C. 111(a) or enter the national stage from an international application after complying with 35 U.S.C. 371.
• International applications are filed under the Patent Cooperation Treaty (PCT).

The MPEP states: The term ‘national application’ as used in this title refers to a U.S. national 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. (MPEP 201.01)

International applications become national applications when they enter the national stage in a specific country, such as the United States. This process involves meeting the requirements of 35 U.S.C. 371.

For more information on international applications, visit: international applications.

For more information on national stage entry, visit: national stage entry.

According to 37 CFR 1.9(a)(1), a national application is defined as:

• A U.S. application for patent filed in the USPTO under 35 U.S.C. 111
• 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
• An international design application filed under the Hague Agreement in which the USPTO has received a copy of the international registration pursuant to Hague Agreement Article 10

This definition encompasses various types of patent applications that are treated as national applications by the USPTO.

There are three main types of national applications for patents in the United States:

• Nonprovisional applications filed under 35 U.S.C. 111(a)
• Provisional applications filed under 35 U.S.C. 111(b)
• International applications that have entered the national stage in the United States

As stated in MPEP 201.01: “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 more information on international applications, visit: international applications.

For more information on nonprovisional applications, visit: nonprovisional applications.

There are several types of patent applications in the United States:

• Nonprovisional applications filed under 35 U.S.C. 111(a), including utility, plant, and design patent applications
• Provisional applications filed under 35 U.S.C. 111(b)
• International applications filed under the Patent Cooperation Treaty (PCT)
• International design applications filed under the Hague Agreement

The MPEP states: 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 more information on Hague Agreement, visit: Hague Agreement.

For more information on international applications, visit: international applications.

For more information on nonprovisional applications, visit: nonprovisional applications.

For more information on patent applications, visit: patent applications.

According to MPEP 201.02, there are several types of patent applications:

• National applications
• Provisional applications
• Nonprovisional applications
• International applications
• International design applications

The definitions for these terms can be found in 37 CFR 1.9. Additionally, applications can be classified as ‘original’ or ‘continuing’ applications. An original application may be a first filing or a continuing application, while a continuing application can be a continuation, divisional, or continuation-in-part application.

For more information on continuing applications, visit: continuing applications.

For more information on international applications, visit: international applications.

For more information on international design applications, visit: international design applications.

For more information on nonprovisional applications, visit: nonprovisional applications.

For more information on patent applications, visit: patent applications.

An international application designating the United States has significant effects on the application process:

• It is treated as a national application from its international filing date.
• It follows different rules for restriction practice and unity of invention.
• It has different notification procedures for incomplete applications.

According to 35 U.S.C. 363: “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.”

However, as noted in MPEP 201.01: “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) have been satisfied) are similar but not identical.” For example, unity of invention practice applies to national stage applications, while restriction practice applies to applications filed under 35 U.S.C. 111(a).

For more information on international applications, visit: international applications.

An international application designating the United States has significant effects on national patent rights. According to 35 U.S.C. 363:

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.

This means that an international application (PCT application) that designates the US is treated similarly to a national application filed under 35 U.S.C. 111. However, there are some differences in treatment between national applications and national stage applications (which enter the national stage from an international application). For example:

• Restriction practice applies to national applications, while unity of invention practice applies to national stage applications
• Different notification practices apply to incomplete applications in each case

For detailed information on the examination of international applications in the national stage, refer to MPEP § 1893.03.

For more information on international applications, visit: international applications.

For more information on patent rights, visit: patent rights.

A ‘bypass’ application is:

• A regular national application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b)
• It claims benefit of an international application’s filing date without entering the national stage under 35 U.S.C. 371
• It can be filed as a continuation, divisional, or continuation-in-part of the international application

MPEP 211.01(c) explains: “Rather than submitting a national stage application under 35 U.S.C. 371, applicant may file a continuation, divisional, or continuation-in-part of an international (PCT) application under 35 U.S.C. 111(a). Such applications are often referred to as ‘bypass’ applications.”

Claiming the benefit of an international application (PCT application) in a U.S. national application has specific requirements. The MPEP states:

“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) may claim the benefit of the filing date of an international application which designates the United States without completing the requirements for entering the national stage under 35 U.S.C. 371.”

Requirements for claiming benefit of an international application:

• The international application must designate the United States
• The international application must be entitled to a filing date in accordance with PCT Article 11
• The later-filed U.S. application must be filed during the pendency of the international application
• The U.S. application can be filed as a continuation, divisional, or continuation-in-part of the international application (often called a “bypass” application)

This allows applicants to claim the benefit of an international application’s filing date without completing the national stage entry process under 35 U.S.C. 371.

Delayed benefit claims in international applications have specific procedures. According to MPEP 211.04:

A petition under 37 CFR 1.78 for accepting an unintentionally delayed benefit claim and the petition fee under 37 CFR 1.17(m) are required to add a benefit claim under 35 U.S.C. 120 and 365(c) in an abandoned international application designating the United States, even when the international application did not enter the national stage under 35 U.S.C. 371.

For international applications not filed with the U.S. Receiving Office and not a nonprovisional application, the petition may be filed in the earliest nonprovisional application claiming benefit to the international application. This petition will be treated as if filed in the international application itself.

For more information on international applications, visit: international applications.

For more information on patent procedure, visit: patent procedure.

The Patent Cooperation Treaty (PCT) system interacts with foreign priority claims in several important ways:

1. Priority claims in PCT applications:
– PCT applications can claim priority to earlier foreign applications under the Paris Convention.
– The priority period is 12 months from the earliest priority date.

2. PCT as a basis for priority:
– A PCT application can serve as the basis for a priority claim in a later-filed national or regional application.

3. Effect on time limits:
– The 30-month time limit for entering the national phase is calculated from the priority date (if claimed) or the PCT filing date if no priority is claimed.

4. Restoration of priority rights:
– The PCT system allows for restoration of priority rights if an international application is filed within 14 months of the priority date and the delay was unintentional.

5. Certified copies:
– The PCT system has provisions for providing certified copies of priority documents to designated offices.

As stated in MPEP 213.06: “In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT.”

The PCT system provides a streamlined process for seeking patent protection internationally while preserving priority rights, but applicants must be aware of the specific requirements and time limits within the PCT system.

35 U.S.C. 365 addresses the right of priority for international applications in two key aspects:

1. National applications based on international applications
2. International applications based on foreign applications

The MPEP states:

“35 U.S.C. 365(a) provides that a national application shall be entitled to the right of priority based on a prior international application of whatever origin, which designated any country other than, or in addition to, the United States.”

“35 U.S.C. 365(b) provides that an international application designating the United States shall be entitled to the right of priority of a prior foreign application which may either be another international application or a regularly filed foreign application.”

These provisions ensure that applicants can claim priority based on international applications, enhancing the flexibility of the international patent system.

Claiming priority to a PCT international application can be done in two ways:

1. In a U.S. national stage application under 35 U.S.C. 371:
   • The priority claim is made in the PCT application
   • No further action is needed when entering the national stage
2. In a U.S. nonprovisional application under 35 U.S.C. 111(a):
   • File within 12 months of the PCT filing date
   • Make the priority claim in an application data sheet
   • Provide a certified copy of the PCT application (unless already filed with the PCT)

In both cases, the PCT application must designate the United States. The specific requirements are detailed in 37 CFR 1.55(d)(2) and (f)(2) for national stage applications, and 37 CFR 1.55(d)(1) and (f)(1) for applications under 35 U.S.C. 111(a).

For international applications, 37 CFR 1.57(b)(1) specifies:n

n
• Any amendment will only be effective as to the United States and shall have no effect on the international filing date

n

• It cannot be relied upon to accord an international filing date or alter the filing date under PCT Article 11

n

• No request to add omitted material will be acted on prior to national stage entry under 37 CFR 1.491 or filing of a US application claiming benefit of the international application

n

For international applications and applications claiming the benefit of a published international application:

1. If the United States is indicated as a Designated State, status information is available for the national stage application and any application claiming benefit of the filing date of the published international application.
2. Only the serial number, filing date, application number, and whether the application is pending, abandoned, or patented may be provided.
3. A copy of the first page of the published international application or the corresponding page of the PCT Gazette must be supplied with the status request.

Status requests should be made in writing to the International Patent Legal Administration or directed to the PCT Help desk.

MPEP 201.01 distinguishes between national applications and international applications:

• National applications are filed directly with the USPTO under 35 U.S.C. 111(a) or enter the national stage from an international application after complying with 35 U.S.C. 371.
• International applications are filed under the Patent Cooperation Treaty (PCT).

The MPEP states: The term ‘national application’ as used in this title refers to a U.S. national 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. (MPEP 201.01)

International applications become national applications when they enter the national stage in a specific country, such as the United States. This process involves meeting the requirements of 35 U.S.C. 371.

For more information on international applications, visit: international applications.

For more information on national stage entry, visit: national stage entry.

According to 37 CFR 1.9(a)(1), a national application is defined as:

• A U.S. application for patent filed in the USPTO under 35 U.S.C. 111
• 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
• An international design application filed under the Hague Agreement in which the USPTO has received a copy of the international registration pursuant to Hague Agreement Article 10

This definition encompasses various types of patent applications that are treated as national applications by the USPTO.

A ‘bypass’ application is:

• A regular national application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b)
• It claims benefit of an international application’s filing date without entering the national stage under 35 U.S.C. 371
• It can be filed as a continuation, divisional, or continuation-in-part of the international application

MPEP 211.01(c) explains: “Rather than submitting a national stage application under 35 U.S.C. 371, applicant may file a continuation, divisional, or continuation-in-part of an international (PCT) application under 35 U.S.C. 111(a). Such applications are often referred to as ‘bypass’ applications.”

According to MPEP 102, for national stage applications or applications claiming the benefit of a published international application:

“Only the serial number and filing date, or application number, as well as whether the application is pending, abandoned, or patented may be given for the national stage application and for any applications claiming the benefit of the filing date of the referenced published international application. Other information contained on the continuity data screen, such as whether the application is a CIP, continuation or divisional application, the date of abandonment of the application and issue date may be confidential information and should not be communicated.”

To request this information, a copy of the first page of the published international application or the corresponding page of the PCT Gazette must be supplied with the status request to the International Patent Legal Administration.

For more information on international applications, visit: international applications.

For more information on status information, visit: status information.

The Patent Law Treaties Implementation Act (PLTIA) of 2012 introduced several important changes to US patent law, particularly regarding priority claims and international applications. Key changes include:

• Restoration of the right of priority to a foreign application or the benefit of a provisional application in certain cases
• Ability to file international design applications
• Ability to claim priority to, and benefit of, international design applications in nonprovisional applications

The MPEP states: “Notable changes to the law and rules included the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications) for filing such a subsequent application. In addition, title I of the PLTIA became effective May 13, 2015, along with corresponding revisions to the rules. Notable changes included the ability to file international design applications and to claim priority to, and the benefit of, international design applications in nonprovisional applications.”

There are three main types of national applications for patents in the United States:

• Nonprovisional applications filed under 35 U.S.C. 111(a)
• Provisional applications filed under 35 U.S.C. 111(b)
• International applications that have entered the national stage in the United States

As stated in MPEP 201.01: “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 more information on international applications, visit: international applications.

For more information on nonprovisional applications, visit: nonprovisional applications.

Claiming the benefit of an international application (PCT application) in a U.S. national application has specific requirements. The MPEP states:

“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) may claim the benefit of the filing date of an international application which designates the United States without completing the requirements for entering the national stage under 35 U.S.C. 371.”

Requirements for claiming benefit of an international application:

• The international application must designate the United States
• The international application must be entitled to a filing date in accordance with PCT Article 11
• The later-filed U.S. application must be filed during the pendency of the international application
• The U.S. application can be filed as a continuation, divisional, or continuation-in-part of the international application (often called a “bypass” application)

This allows applicants to claim the benefit of an international application’s filing date without completing the national stage entry process under 35 U.S.C. 371.

The requirements for claiming benefit of an earlier national application under 37 CFR 1.78 include:

• A specific reference to the earlier-filed application in the later-filed application
• For applications filed on or after September 16, 2012, the specific reference must be in the application data sheet (ADS)
• For applications filed before September 16, 2012, the specific reference must be in the ADS or in the first sentence(s) of the specification
• Meeting time requirements for filing the benefit claim
• In some cases, providing a statement regarding the effective filing date of claims

The MPEP states: “Whether an application was filed before, on, or after March 16, 2013, statutory provisions require that for a later-filed application to be entitled to the benefit of an earlier-filed national application, the later-filed application must contain a specific reference to the earlier-filed application.”

There are several types of patent applications in the United States:

• Nonprovisional applications filed under 35 U.S.C. 111(a), including utility, plant, and design patent applications
• Provisional applications filed under 35 U.S.C. 111(b)
• International applications filed under the Patent Cooperation Treaty (PCT)
• International design applications filed under the Hague Agreement

The MPEP states: 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 more information on Hague Agreement, visit: Hague Agreement.

For more information on international applications, visit: international applications.

For more information on nonprovisional applications, visit: nonprovisional applications.

For more information on patent applications, visit: patent applications.

According to MPEP 201.02, there are several types of patent applications:

• National applications
• Provisional applications
• Nonprovisional applications
• International applications
• International design applications

The definitions for these terms can be found in 37 CFR 1.9. Additionally, applications can be classified as ‘original’ or ‘continuing’ applications. An original application may be a first filing or a continuing application, while a continuing application can be a continuation, divisional, or continuation-in-part application.

For more information on continuing applications, visit: continuing applications.

For more information on international applications, visit: international applications.

For more information on international design applications, visit: international design applications.

For more information on nonprovisional applications, visit: nonprovisional applications.

For more information on patent applications, visit: patent applications.

For status inquiries regarding PCT applications, the MPEP provides specific guidance:

• Inquiries relating to international applications filed under the Patent Cooperation Treaty (PCT) should be directed to the PCT Help Desk.
• The MPEP states: Inquiries relating to international applications (PCT) … should be directed to the PCT Help Desk at 1-800-PTO-9199 or 571-272-4300.
• The PCT Help Desk can provide information on the processing of international applications at the United States Receiving Office (RO/US), United States International Searching Authority (ISA/US), and United States International Preliminary Examining Authority (IPEA/US).

It’s important to use the correct channel for PCT-related inquiries to ensure accurate and timely information.

To learn more:

• PCT applications
• international applications
• PCT Help Desk

The United States Patent and Trademark Office (USPTO) has specific procedures for maintaining the confidentiality of international applications filed in the U.S. According to MPEP 110, which references 35 U.S.C. 368, International applications filed in the Patent and Trademark Office shall be subject to the provisions of chapter 17. This means that such applications are subject to the same secrecy provisions as regular U.S. patent applications. Additionally, If a license to file in a foreign country is refused or if an international application is ordered to be kept secret and a permit refused, the Patent and Trademark Office when acting as a Receiving Office, International Searching Authority, or International Preliminary Examining Authority, may not disclose the contents of such application to anyone not authorized to receive such disclosure. This ensures that sensitive information in international applications is protected in accordance with U.S. law.

For more information on international applications, visit: international applications.

For more information on USPTO, visit: USPTO.

The priority claim deadline for PCT applications entering the national stage in the U.S. differs from that of regular U.S. patent applications:

• PCT National Stage Applications: For these applications, the priority claim must be made within the time limit set in the PCT and the Regulations under the PCT.
• Regular U.S. Applications: The deadline is the later of four months from the actual U.S. filing date or sixteen months from the foreign priority date.

According to MPEP 214.01: “In an application that entered the national stage from an international application after compliance with 35 U.S.C. 371, the claim for priority must be made during the pendency of the application and within the time limit set forth in the PCT and the Regulations under the PCT.”

It’s crucial to understand these differences to ensure timely filing of priority claims in different application types.

To learn more:

• PCT applications
• national stage
• priority claim deadline
• international applications

The Patent Cooperation Treaty (PCT) system interacts with foreign priority claims in several important ways:

1. Priority claims in PCT applications:
– PCT applications can claim priority to earlier foreign applications under the Paris Convention.
– The priority period is 12 months from the earliest priority date.

2. PCT as a basis for priority:
– A PCT application can serve as the basis for a priority claim in a later-filed national or regional application.

3. Effect on time limits:
– The 30-month time limit for entering the national phase is calculated from the priority date (if claimed) or the PCT filing date if no priority is claimed.

4. Restoration of priority rights:
– The PCT system allows for restoration of priority rights if an international application is filed within 14 months of the priority date and the delay was unintentional.

5. Certified copies:
– The PCT system has provisions for providing certified copies of priority documents to designated offices.

As stated in MPEP 213.06: “In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT.”

The PCT system provides a streamlined process for seeking patent protection internationally while preserving priority rights, but applicants must be aware of the specific requirements and time limits within the PCT system.

The Patent Cooperation Treaty (PCT) significantly impacts international patent applications. According to MPEP 213.01:

International applications filed under the Patent Cooperation Treaty (PCT) are considered to have been filed in any PCT contracting state of which the United States is one.

This means that a PCT application effectively serves as a placeholder for potential national phase entries in all PCT member countries. It provides applicants with additional time to decide in which countries they want to pursue patent protection, while securing an early filing date.

To learn more:

• PCT
• international applications
• patent filing strategy

An international application designating the United States has significant effects on the application process:

• It is treated as a national application from its international filing date.
• It follows different rules for restriction practice and unity of invention.
• It has different notification procedures for incomplete applications.

According to 35 U.S.C. 363: “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.”

However, as noted in MPEP 201.01: “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) have been satisfied) are similar but not identical.” For example, unity of invention practice applies to national stage applications, while restriction practice applies to applications filed under 35 U.S.C. 111(a).

For more information on international applications, visit: international applications.

An international application designating the United States has significant effects on national patent rights. According to 35 U.S.C. 363:

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.

This means that an international application (PCT application) that designates the US is treated similarly to a national application filed under 35 U.S.C. 111. However, there are some differences in treatment between national applications and national stage applications (which enter the national stage from an international application). For example:

• Restriction practice applies to national applications, while unity of invention practice applies to national stage applications
• Different notification practices apply to incomplete applications in each case

For detailed information on the examination of international applications in the national stage, refer to MPEP § 1893.03.

For more information on international applications, visit: international applications.

For more information on patent rights, visit: patent rights.

A Secrecy Order significantly impacts the prosecution of a patent application. According to 37 CFR 5.3:

Unless specifically ordered otherwise, action on the application by the Office and prosecution by the applicant will proceed during the time an application is under secrecy order to the point indicated in this section.

Key effects include:

• Applications under final rejection must be appealed or prosecuted to avoid abandonment, but appeals won’t be set for hearing until the Secrecy Order is removed.
• Interferences or derivation proceedings won’t be instituted for applications under Secrecy Order.
• When the application is in condition for allowance, the applicant and the relevant agency will be notified, but no notice of allowance will be issued until the Secrecy Order is removed.
• International applications under Secrecy Order won’t be transmitted to international authorities or the applicant.

These restrictions ensure that sensitive information remains protected while allowing some progress in the application process.

For more information on international applications, visit: international applications.

For more information on patent prosecution, visit: patent prosecution.

For international applications, 37 CFR 1.57(b)(1) specifies:n

n
• Any amendment will only be effective as to the United States and shall have no effect on the international filing date

n

• It cannot be relied upon to accord an international filing date or alter the filing date under PCT Article 11

n

• No request to add omitted material will be acted on prior to national stage entry under 37 CFR 1.491 or filing of a US application claiming benefit of the international application

n

35 U.S.C. 365 addresses the right of priority for international applications in two key aspects:

1. National applications based on international applications
2. International applications based on foreign applications

The MPEP states:

“35 U.S.C. 365(a) provides that a national application shall be entitled to the right of priority based on a prior international application of whatever origin, which designated any country other than, or in addition to, the United States.”

“35 U.S.C. 365(b) provides that an international application designating the United States shall be entitled to the right of priority of a prior foreign application which may either be another international application or a regularly filed foreign application.”

These provisions ensure that applicants can claim priority based on international applications, enhancing the flexibility of the international patent system.

Claiming priority to a PCT international application can be done in two ways:

1. In a U.S. national stage application under 35 U.S.C. 371:
   • The priority claim is made in the PCT application
   • No further action is needed when entering the national stage
2. In a U.S. nonprovisional application under 35 U.S.C. 111(a):
   • File within 12 months of the PCT filing date
   • Make the priority claim in an application data sheet
   • Provide a certified copy of the PCT application (unless already filed with the PCT)

In both cases, the PCT application must designate the United States. The specific requirements are detailed in 37 CFR 1.55(d)(2) and (f)(2) for national stage applications, and 37 CFR 1.55(d)(1) and (f)(1) for applications under 35 U.S.C. 111(a).

Delayed benefit claims in international applications have specific procedures. According to MPEP 211.04:

A petition under 37 CFR 1.78 for accepting an unintentionally delayed benefit claim and the petition fee under 37 CFR 1.17(m) are required to add a benefit claim under 35 U.S.C. 120 and 365(c) in an abandoned international application designating the United States, even when the international application did not enter the national stage under 35 U.S.C. 371.

For international applications not filed with the U.S. Receiving Office and not a nonprovisional application, the petition may be filed in the earliest nonprovisional application claiming benefit to the international application. This petition will be treated as if filed in the international application itself.

For more information on international applications, visit: international applications.

For more information on patent procedure, visit: patent procedure.

In general, status information cannot be provided for unpublished patent applications, unless the requester is:

1. The applicant
2. A patent practitioner of record
3. The assignee or an assignee of an undivided part interest
4. The inventor or a joint inventor
5. A registered attorney or agent named in the application papers

Alternatively, a person with written authority from any of the above parties can be provided status information.

There are some exceptions where status information can be supplied for unpublished applications, such as:

• When the application is identified in a published patent document or another application publication
• When the application is a national stage application or claims benefit to a published international application and the US is a designated state
• When the application is an international design application maintained by the USPTO for national processing

Access to international application files at the USPTO is governed by specific rules. According to MPEP 103:

‘International applications that designate the U.S. and have been published in accordance with PCT Article 21(2) are generally open to public inspection and copying.’

This means:

• Published international applications designating the U.S. are accessible
• Access is available after the application’s international publication
• Unpublished international applications are not open to public inspection

To access these files, you can use the USPTO’s Public PAIR system or visit the USPTO’s Public Search Facility.

For more information on international applications, visit: international applications.

For more information on public inspection, visit: public inspection.

For international applications and applications claiming the benefit of a published international application:

1. If the United States is indicated as a Designated State, status information is available for the national stage application and any application claiming benefit of the filing date of the published international application.
2. Only the serial number, filing date, application number, and whether the application is pending, abandoned, or patented may be provided.
3. A copy of the first page of the published international application or the corresponding page of the PCT Gazette must be supplied with the status request.

Status requests should be made in writing to the International Patent Legal Administration or directed to the PCT Help desk.

MPEP 201.01 distinguishes between national applications and international applications:

• National applications are filed directly with the USPTO under 35 U.S.C. 111(a) or enter the national stage from an international application after complying with 35 U.S.C. 371.
• International applications are filed under the Patent Cooperation Treaty (PCT).

The MPEP states: The term ‘national application’ as used in this title refers to a U.S. national 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. (MPEP 201.01)

International applications become national applications when they enter the national stage in a specific country, such as the United States. This process involves meeting the requirements of 35 U.S.C. 371.

For more information on international applications, visit: international applications.

For more information on national stage entry, visit: national stage entry.

According to 37 CFR 1.9(a)(1), a national application is defined as:

• A U.S. application for patent filed in the USPTO under 35 U.S.C. 111
• 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
• An international design application filed under the Hague Agreement in which the USPTO has received a copy of the international registration pursuant to Hague Agreement Article 10

This definition encompasses various types of patent applications that are treated as national applications by the USPTO.

A ‘bypass’ application is:

• A regular national application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b)
• It claims benefit of an international application’s filing date without entering the national stage under 35 U.S.C. 371
• It can be filed as a continuation, divisional, or continuation-in-part of the international application

MPEP 211.01(c) explains: “Rather than submitting a national stage application under 35 U.S.C. 371, applicant may file a continuation, divisional, or continuation-in-part of an international (PCT) application under 35 U.S.C. 111(a). Such applications are often referred to as ‘bypass’ applications.”

According to MPEP 102, for national stage applications or applications claiming the benefit of a published international application:

“Only the serial number and filing date, or application number, as well as whether the application is pending, abandoned, or patented may be given for the national stage application and for any applications claiming the benefit of the filing date of the referenced published international application. Other information contained on the continuity data screen, such as whether the application is a CIP, continuation or divisional application, the date of abandonment of the application and issue date may be confidential information and should not be communicated.”

To request this information, a copy of the first page of the published international application or the corresponding page of the PCT Gazette must be supplied with the status request to the International Patent Legal Administration.

For more information on international applications, visit: international applications.

For more information on status information, visit: status information.

The Patent Law Treaties Implementation Act (PLTIA) of 2012 introduced several important changes to US patent law, particularly regarding priority claims and international applications. Key changes include:

• Restoration of the right of priority to a foreign application or the benefit of a provisional application in certain cases
• Ability to file international design applications
• Ability to claim priority to, and benefit of, international design applications in nonprovisional applications

The MPEP states: “Notable changes to the law and rules included the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications) for filing such a subsequent application. In addition, title I of the PLTIA became effective May 13, 2015, along with corresponding revisions to the rules. Notable changes included the ability to file international design applications and to claim priority to, and the benefit of, international design applications in nonprovisional applications.”

There are three main types of national applications for patents in the United States:

• Nonprovisional applications filed under 35 U.S.C. 111(a)
• Provisional applications filed under 35 U.S.C. 111(b)
• International applications that have entered the national stage in the United States

As stated in MPEP 201.01: “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 more information on international applications, visit: international applications.

For more information on nonprovisional applications, visit: nonprovisional applications.

Claiming the benefit of an international application (PCT application) in a U.S. national application has specific requirements. The MPEP states:

“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) may claim the benefit of the filing date of an international application which designates the United States without completing the requirements for entering the national stage under 35 U.S.C. 371.”

Requirements for claiming benefit of an international application:

• The international application must designate the United States
• The international application must be entitled to a filing date in accordance with PCT Article 11
• The later-filed U.S. application must be filed during the pendency of the international application
• The U.S. application can be filed as a continuation, divisional, or continuation-in-part of the international application (often called a “bypass” application)

This allows applicants to claim the benefit of an international application’s filing date without completing the national stage entry process under 35 U.S.C. 371.

The requirements for claiming benefit of an earlier national application under 37 CFR 1.78 include:

• A specific reference to the earlier-filed application in the later-filed application
• For applications filed on or after September 16, 2012, the specific reference must be in the application data sheet (ADS)
• For applications filed before September 16, 2012, the specific reference must be in the ADS or in the first sentence(s) of the specification
• Meeting time requirements for filing the benefit claim
• In some cases, providing a statement regarding the effective filing date of claims

The MPEP states: “Whether an application was filed before, on, or after March 16, 2013, statutory provisions require that for a later-filed application to be entitled to the benefit of an earlier-filed national application, the later-filed application must contain a specific reference to the earlier-filed application.”

There are several types of patent applications in the United States:

• Nonprovisional applications filed under 35 U.S.C. 111(a), including utility, plant, and design patent applications
• Provisional applications filed under 35 U.S.C. 111(b)
• International applications filed under the Patent Cooperation Treaty (PCT)
• International design applications filed under the Hague Agreement

The MPEP states: 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 more information on Hague Agreement, visit: Hague Agreement.

For more information on international applications, visit: international applications.

For more information on nonprovisional applications, visit: nonprovisional applications.

For more information on patent applications, visit: patent applications.

According to MPEP 201.02, there are several types of patent applications:

• National applications
• Provisional applications
• Nonprovisional applications
• International applications
• International design applications

The definitions for these terms can be found in 37 CFR 1.9. Additionally, applications can be classified as ‘original’ or ‘continuing’ applications. An original application may be a first filing or a continuing application, while a continuing application can be a continuation, divisional, or continuation-in-part application.

For more information on continuing applications, visit: continuing applications.

For more information on international applications, visit: international applications.

For more information on international design applications, visit: international design applications.

For more information on nonprovisional applications, visit: nonprovisional applications.

For more information on patent applications, visit: patent applications.

For status inquiries regarding PCT applications, the MPEP provides specific guidance:

• Inquiries relating to international applications filed under the Patent Cooperation Treaty (PCT) should be directed to the PCT Help Desk.
• The MPEP states: Inquiries relating to international applications (PCT) … should be directed to the PCT Help Desk at 1-800-PTO-9199 or 571-272-4300.
• The PCT Help Desk can provide information on the processing of international applications at the United States Receiving Office (RO/US), United States International Searching Authority (ISA/US), and United States International Preliminary Examining Authority (IPEA/US).

It’s important to use the correct channel for PCT-related inquiries to ensure accurate and timely information.

To learn more:

• PCT applications
• international applications
• PCT Help Desk

The United States Patent and Trademark Office (USPTO) has specific procedures for maintaining the confidentiality of international applications filed in the U.S. According to MPEP 110, which references 35 U.S.C. 368, International applications filed in the Patent and Trademark Office shall be subject to the provisions of chapter 17. This means that such applications are subject to the same secrecy provisions as regular U.S. patent applications. Additionally, If a license to file in a foreign country is refused or if an international application is ordered to be kept secret and a permit refused, the Patent and Trademark Office when acting as a Receiving Office, International Searching Authority, or International Preliminary Examining Authority, may not disclose the contents of such application to anyone not authorized to receive such disclosure. This ensures that sensitive information in international applications is protected in accordance with U.S. law.

For more information on international applications, visit: international applications.

For more information on USPTO, visit: USPTO.

The priority claim deadline for PCT applications entering the national stage in the U.S. differs from that of regular U.S. patent applications:

• PCT National Stage Applications: For these applications, the priority claim must be made within the time limit set in the PCT and the Regulations under the PCT.
• Regular U.S. Applications: The deadline is the later of four months from the actual U.S. filing date or sixteen months from the foreign priority date.

According to MPEP 214.01: “In an application that entered the national stage from an international application after compliance with 35 U.S.C. 371, the claim for priority must be made during the pendency of the application and within the time limit set forth in the PCT and the Regulations under the PCT.”

It’s crucial to understand these differences to ensure timely filing of priority claims in different application types.

To learn more:

• PCT applications
• national stage
• priority claim deadline
• international applications

The Patent Cooperation Treaty (PCT) system interacts with foreign priority claims in several important ways:

1. Priority claims in PCT applications:
– PCT applications can claim priority to earlier foreign applications under the Paris Convention.
– The priority period is 12 months from the earliest priority date.

2. PCT as a basis for priority:
– A PCT application can serve as the basis for a priority claim in a later-filed national or regional application.

3. Effect on time limits:
– The 30-month time limit for entering the national phase is calculated from the priority date (if claimed) or the PCT filing date if no priority is claimed.

4. Restoration of priority rights:
– The PCT system allows for restoration of priority rights if an international application is filed within 14 months of the priority date and the delay was unintentional.

5. Certified copies:
– The PCT system has provisions for providing certified copies of priority documents to designated offices.

As stated in MPEP 213.06: “In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT.”

The PCT system provides a streamlined process for seeking patent protection internationally while preserving priority rights, but applicants must be aware of the specific requirements and time limits within the PCT system.

The Patent Cooperation Treaty (PCT) significantly impacts international patent applications. According to MPEP 213.01:

International applications filed under the Patent Cooperation Treaty (PCT) are considered to have been filed in any PCT contracting state of which the United States is one.

This means that a PCT application effectively serves as a placeholder for potential national phase entries in all PCT member countries. It provides applicants with additional time to decide in which countries they want to pursue patent protection, while securing an early filing date.

To learn more:

• PCT
• international applications
• patent filing strategy

An international application designating the United States has significant effects on the application process:

• It is treated as a national application from its international filing date.
• It follows different rules for restriction practice and unity of invention.
• It has different notification procedures for incomplete applications.

According to 35 U.S.C. 363: “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.”

However, as noted in MPEP 201.01: “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) have been satisfied) are similar but not identical.” For example, unity of invention practice applies to national stage applications, while restriction practice applies to applications filed under 35 U.S.C. 111(a).

For more information on international applications, visit: international applications.

An international application designating the United States has significant effects on national patent rights. According to 35 U.S.C. 363:

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.

This means that an international application (PCT application) that designates the US is treated similarly to a national application filed under 35 U.S.C. 111. However, there are some differences in treatment between national applications and national stage applications (which enter the national stage from an international application). For example:

• Restriction practice applies to national applications, while unity of invention practice applies to national stage applications
• Different notification practices apply to incomplete applications in each case

For detailed information on the examination of international applications in the national stage, refer to MPEP § 1893.03.

For more information on international applications, visit: international applications.

For more information on patent rights, visit: patent rights.

A Secrecy Order significantly impacts the prosecution of a patent application. According to 37 CFR 5.3:

Unless specifically ordered otherwise, action on the application by the Office and prosecution by the applicant will proceed during the time an application is under secrecy order to the point indicated in this section.

Key effects include:

• Applications under final rejection must be appealed or prosecuted to avoid abandonment, but appeals won’t be set for hearing until the Secrecy Order is removed.
• Interferences or derivation proceedings won’t be instituted for applications under Secrecy Order.
• When the application is in condition for allowance, the applicant and the relevant agency will be notified, but no notice of allowance will be issued until the Secrecy Order is removed.
• International applications under Secrecy Order won’t be transmitted to international authorities or the applicant.

These restrictions ensure that sensitive information remains protected while allowing some progress in the application process.

For more information on international applications, visit: international applications.

For more information on patent prosecution, visit: patent prosecution.

For international applications, 37 CFR 1.57(b)(1) specifies:n

n
• Any amendment will only be effective as to the United States and shall have no effect on the international filing date

n

• It cannot be relied upon to accord an international filing date or alter the filing date under PCT Article 11

n

• No request to add omitted material will be acted on prior to national stage entry under 37 CFR 1.491 or filing of a US application claiming benefit of the international application

n

35 U.S.C. 365 addresses the right of priority for international applications in two key aspects:

1. National applications based on international applications
2. International applications based on foreign applications

The MPEP states:

“35 U.S.C. 365(a) provides that a national application shall be entitled to the right of priority based on a prior international application of whatever origin, which designated any country other than, or in addition to, the United States.”

“35 U.S.C. 365(b) provides that an international application designating the United States shall be entitled to the right of priority of a prior foreign application which may either be another international application or a regularly filed foreign application.”

These provisions ensure that applicants can claim priority based on international applications, enhancing the flexibility of the international patent system.

Claiming priority to a PCT international application can be done in two ways:

1. In a U.S. national stage application under 35 U.S.C. 371:
   • The priority claim is made in the PCT application
   • No further action is needed when entering the national stage
2. In a U.S. nonprovisional application under 35 U.S.C. 111(a):
   • File within 12 months of the PCT filing date
   • Make the priority claim in an application data sheet
   • Provide a certified copy of the PCT application (unless already filed with the PCT)

In both cases, the PCT application must designate the United States. The specific requirements are detailed in 37 CFR 1.55(d)(2) and (f)(2) for national stage applications, and 37 CFR 1.55(d)(1) and (f)(1) for applications under 35 U.S.C. 111(a).

Delayed benefit claims in international applications have specific procedures. According to MPEP 211.04:

A petition under 37 CFR 1.78 for accepting an unintentionally delayed benefit claim and the petition fee under 37 CFR 1.17(m) are required to add a benefit claim under 35 U.S.C. 120 and 365(c) in an abandoned international application designating the United States, even when the international application did not enter the national stage under 35 U.S.C. 371.

For international applications not filed with the U.S. Receiving Office and not a nonprovisional application, the petition may be filed in the earliest nonprovisional application claiming benefit to the international application. This petition will be treated as if filed in the international application itself.

For more information on international applications, visit: international applications.

For more information on patent procedure, visit: patent procedure.

Access to international application files at the USPTO is governed by specific rules. According to MPEP 103:

‘International applications that designate the U.S. and have been published in accordance with PCT Article 21(2) are generally open to public inspection and copying.’

This means:

• Published international applications designating the U.S. are accessible
• Access is available after the application’s international publication
• Unpublished international applications are not open to public inspection

To access these files, you can use the USPTO’s Public PAIR system or visit the USPTO’s Public Search Facility.

For more information on international applications, visit: international applications.

For more information on public inspection, visit: public inspection.