Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Here’s the complete FAQ:
MPEP 200 - Types and Status of Application; Benefit and Priority (11)
For nonprovisional applications entering the national stage from an international application under 35 U.S.C. 371, the benefit claim must be made within the later of:
- Four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f)
- Four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage
- Sixteen months from the filing date of the prior application
The MPEP states: If the application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, the benefit claim must be made within the later of: (1) four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f); (2) four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage; or (3) sixteen months from the filing date of the prior application.
To learn more:
To learn more:
The time limit for submitting a benefit claim depends on the type of application:
- For utility or plant applications filed under 35 U.S.C. 111(a), the specific reference must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.
- For national stage applications under 35 U.S.C. 371, the specific reference must be submitted during the pendency of the application and within the later of four months from the date on which the national stage commenced, four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application.
As stated in MPEP 211.02: This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c).
For more information on national stage application, visit: national stage application.
For more information on time limit, visit: time limit.
What is the deadline for submitting certified copies in a national stage application?
The deadline for submitting certified copies in a national stage application (35 U.S.C. 371) is as follows:
- Certified copies must be filed within the time limit set in 37 CFR 1.55(f).
- This is typically within the later of 4 months from the actual filing date of the application or 16 months from the filing date of the prior foreign application.
The MPEP 213.06 states: ‘A certified copy of the foreign application must be filed within the time limit set forth in 37 CFR 1.55(f).’ It’s important to note that this requirement applies unless the certified copy was previously filed in the international application and the requirements of PCT Rule 17.1(a), (b), or (b-bis) have been met.
To learn more:
The deadline for submitting a benefit claim depends on the type of application:
- For utility or plant applications filed under 35 U.S.C. 111(a): Submit within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.
- For national stage applications under 35 U.S.C. 371: Submit within the later of four months from the date on which the national stage commenced, four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application.
The MPEP emphasizes: This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c).
(MPEP ยง 211)
For more information on national stage application, visit: national stage application.
The deadline for filing a benefit claim depends on the type of application:
- For applications filed under 35 U.S.C. 111(a), the reference must be submitted within the later of:
- Four months from the actual filing date of the application, or
- Sixteen months from the filing date of the prior application
- For nonprovisional applications entering the national stage from an international application under 35 U.S.C. 371, the reference must be made within the later of:
- Four months from the date on which the national stage commenced
- Four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage
- Sixteen months from the filing date of the prior application
As stated in the MPEP: “If the application is an application filed under 35 U.S.C. 111(a), the reference to the prior application must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.”
For more information on 35 U.S.C. 111(a), visit: 35 U.S.C. 111(a).
For more information on 35 U.S.C. 371, visit: 35 U.S.C. 371.
For more information on filing deadline, visit: filing deadline.
For more information on national stage application, visit: national stage application.
If a certified copy of the priority document is not filed within the time limit in a U.S. national stage application, the following consequences may occur:
- The right to priority may be lost if the certified copy is not filed within the time period set in 37 CFR 1.55.
- However, if the certified copy is filed after the time period set in 37 CFR 1.55 but during the pendency of the application, the right to priority may be restored under certain conditions.
- According to MPEP 213.06, ‘If the certified copy is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.’
It’s crucial to file the certified copy within the specified time limit to avoid potential complications in claiming priority.
To learn more:
To learn more:
In a national stage application 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. According to 37 CFR 1.55(d)(2), this is the general rule, with some exceptions provided in paragraph (e) of the same section.
The MPEP states: In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made and a certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT with limited exceptions.
To learn more:
For national stage applications under 35 U.S.C. 371, the requirements for filing a certified copy of a foreign application are outlined in 37 CFR 1.55(f)(2). The MPEP states:
A certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371.
If the certified copy was not filed during the international stage, it must be filed within the later of:
- Four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f)
- Four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage
- Sixteen months from the filing date of the prior foreign application
Exceptions to these time limits are provided in paragraphs (h), (i), and (j) of 37 CFR 1.55.
To learn more:
The benefit claim process for national stage applications entering from an international application under 35 U.S.C. 371 has some specific timing requirements that differ from regular applications filed under 35 U.S.C. 111(a). The MPEP states:
“If the application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, the reference to the prior application must be made during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application.”
Key differences for national stage applications include:
- The time period for submitting the benefit claim starts from the date the national stage commenced or the date of initial submission to enter the national stage.
- There are three possible deadlines, and the applicant can use the latest of these:
- Four months from the date the national stage commenced
- Four months from the date of the initial submission to enter the national stage
- Sixteen months from the filing date of the prior application
It’s important to carefully track these dates for national stage applications to ensure timely submission of benefit claims.
For more information on 35 U.S.C. 371, visit: 35 U.S.C. 371.
For more information on national stage application, visit: national stage application.
How does a U.S. national stage application differ from a regular national application?
A U.S. national stage application is derived from an international application, while a regular national application is filed directly with the USPTO. The key differences lie in their origins and the legal provisions governing them.
As stated in MPEP 201.01:
A national application may be a U.S. national application filed under 35 U.S.C. 111(a), or a national stage application under 35 U.S.C. 371 of an international application.
Regular national applications are filed under 35 U.S.C. 111(a), while national stage applications enter the U.S. national phase from an international PCT application under 35 U.S.C. 371. National stage applications must meet specific requirements for entering the national phase, such as time limits and submission of necessary documents.
For more information on national stage application, visit: national stage application.
For more information on patent filing, visit: patent filing.
For more information on USPTO, visit: USPTO.
For international applications entering the U.S. national stage under 35 U.S.C. 371, the priority claim must be made within the time limit set by the PCT and its regulations. MPEP 213.06 states: ‘In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made and a certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT.’
If the priority claim was properly made during the international phase, it’s generally not necessary to repeat it upon national stage entry. However, the certified copy of the priority document must be furnished if not previously submitted to the International Bureau or the USPTO.
For more information on national stage application, visit: national stage application.
MPEP 200 - Types and Status of Application; Benefit and Priority Claims (1)
A certified copy of the foreign application must be filed within the time period set in 37 CFR 1.55, which is the later of four months from the filing date of the US application or sixteen months from the foreign application filing date.
The certified copy requirement will be considered satisfied in a national stage application under 35 U.S.C. 371 if a certified copy was filed in the international application and the copy is present in the national stage application. See MPEP ยง 215.
A certified copy is also not required if the foreign priority application was filed in a participating foreign intellectual property office and the USPTO retrieves a copy via the priority document exchange program. See MPEP ยง 215.01.
An interim copy of the foreign application may also be filed to meet the timeliness requirement. See 37 CFR 1.55(j) and MPEP ยง 215.02(b).
MPEP 201 - Types of Applications (1)
How does a U.S. national stage application differ from a regular national application?
A U.S. national stage application is derived from an international application, while a regular national application is filed directly with the USPTO. The key differences lie in their origins and the legal provisions governing them.
As stated in MPEP 201.01:
A national application may be a U.S. national application filed under 35 U.S.C. 111(a), or a national stage application under 35 U.S.C. 371 of an international application.
Regular national applications are filed under 35 U.S.C. 111(a), while national stage applications enter the U.S. national phase from an international PCT application under 35 U.S.C. 371. National stage applications must meet specific requirements for entering the national phase, such as time limits and submission of necessary documents.
For more information on national stage application, visit: national stage application.
For more information on patent filing, visit: patent filing.
For more information on USPTO, visit: USPTO.
MPEP 211 - Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e) (4)
The time limit for submitting a benefit claim depends on the type of application:
- For utility or plant applications filed under 35 U.S.C. 111(a), the specific reference must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.
- For national stage applications under 35 U.S.C. 371, the specific reference must be submitted during the pendency of the application and within the later of four months from the date on which the national stage commenced, four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application.
As stated in MPEP 211.02: This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c).
For more information on national stage application, visit: national stage application.
For more information on time limit, visit: time limit.
The deadline for submitting a benefit claim depends on the type of application:
- For utility or plant applications filed under 35 U.S.C. 111(a): Submit within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.
- For national stage applications under 35 U.S.C. 371: Submit within the later of four months from the date on which the national stage commenced, four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application.
The MPEP emphasizes: This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c).
(MPEP ยง 211)
For more information on national stage application, visit: national stage application.
The deadline for filing a benefit claim depends on the type of application:
- For applications filed under 35 U.S.C. 111(a), the reference must be submitted within the later of:
- Four months from the actual filing date of the application, or
- Sixteen months from the filing date of the prior application
- For nonprovisional applications entering the national stage from an international application under 35 U.S.C. 371, the reference must be made within the later of:
- Four months from the date on which the national stage commenced
- Four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage
- Sixteen months from the filing date of the prior application
As stated in the MPEP: “If the application is an application filed under 35 U.S.C. 111(a), the reference to the prior application must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.”
For more information on 35 U.S.C. 111(a), visit: 35 U.S.C. 111(a).
For more information on 35 U.S.C. 371, visit: 35 U.S.C. 371.
For more information on filing deadline, visit: filing deadline.
For more information on national stage application, visit: national stage application.
The benefit claim process for national stage applications entering from an international application under 35 U.S.C. 371 has some specific timing requirements that differ from regular applications filed under 35 U.S.C. 111(a). The MPEP states:
“If the application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, the reference to the prior application must be made during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application.”
Key differences for national stage applications include:
- The time period for submitting the benefit claim starts from the date the national stage commenced or the date of initial submission to enter the national stage.
- There are three possible deadlines, and the applicant can use the latest of these:
- Four months from the date the national stage commenced
- Four months from the date of the initial submission to enter the national stage
- Sixteen months from the filing date of the prior application
It’s important to carefully track these dates for national stage applications to ensure timely submission of benefit claims.
For more information on 35 U.S.C. 371, visit: 35 U.S.C. 371.
For more information on national stage application, visit: national stage application.
MPEP 213-Right of Priority of Foreign Application (1)
For international applications entering the U.S. national stage under 35 U.S.C. 371, the priority claim must be made within the time limit set by the PCT and its regulations. MPEP 213.06 states: ‘In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made and a certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT.’
If the priority claim was properly made during the international phase, it’s generally not necessary to repeat it upon national stage entry. However, the certified copy of the priority document must be furnished if not previously submitted to the International Bureau or the USPTO.
For more information on national stage application, visit: national stage application.
MPEP 214-Formal Requirements of Claim for Foreign Priority (1)
A certified copy of the foreign application must be filed within the time period set in 37 CFR 1.55, which is the later of four months from the filing date of the US application or sixteen months from the foreign application filing date.
The certified copy requirement will be considered satisfied in a national stage application under 35 U.S.C. 371 if a certified copy was filed in the international application and the copy is present in the national stage application. See MPEP ยง 215.
A certified copy is also not required if the foreign priority application was filed in a participating foreign intellectual property office and the USPTO retrieves a copy via the priority document exchange program. See MPEP ยง 215.01.
An interim copy of the foreign application may also be filed to meet the timeliness requirement. See 37 CFR 1.55(j) and MPEP ยง 215.02(b).
Patent Law (16)
For nonprovisional applications entering the national stage from an international application under 35 U.S.C. 371, the benefit claim must be made within the later of:
- Four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f)
- Four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage
- Sixteen months from the filing date of the prior application
The MPEP states: If the application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, the benefit claim must be made within the later of: (1) four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f); (2) four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage; or (3) sixteen months from the filing date of the prior application.
To learn more:
To learn more:
The time limit for submitting a benefit claim depends on the type of application:
- For utility or plant applications filed under 35 U.S.C. 111(a), the specific reference must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.
- For national stage applications under 35 U.S.C. 371, the specific reference must be submitted during the pendency of the application and within the later of four months from the date on which the national stage commenced, four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application.
As stated in MPEP 211.02: This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c).
For more information on national stage application, visit: national stage application.
For more information on time limit, visit: time limit.
What is the deadline for submitting certified copies in a national stage application?
The deadline for submitting certified copies in a national stage application (35 U.S.C. 371) is as follows:
- Certified copies must be filed within the time limit set in 37 CFR 1.55(f).
- This is typically within the later of 4 months from the actual filing date of the application or 16 months from the filing date of the prior foreign application.
The MPEP 213.06 states: ‘A certified copy of the foreign application must be filed within the time limit set forth in 37 CFR 1.55(f).’ It’s important to note that this requirement applies unless the certified copy was previously filed in the international application and the requirements of PCT Rule 17.1(a), (b), or (b-bis) have been met.
To learn more:
The deadline for submitting a benefit claim depends on the type of application:
- For utility or plant applications filed under 35 U.S.C. 111(a): Submit within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.
- For national stage applications under 35 U.S.C. 371: Submit within the later of four months from the date on which the national stage commenced, four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application.
The MPEP emphasizes: This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c).
(MPEP ยง 211)
For more information on national stage application, visit: national stage application.
The deadline for filing a benefit claim depends on the type of application:
- For applications filed under 35 U.S.C. 111(a), the reference must be submitted within the later of:
- Four months from the actual filing date of the application, or
- Sixteen months from the filing date of the prior application
- For nonprovisional applications entering the national stage from an international application under 35 U.S.C. 371, the reference must be made within the later of:
- Four months from the date on which the national stage commenced
- Four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage
- Sixteen months from the filing date of the prior application
As stated in the MPEP: “If the application is an application filed under 35 U.S.C. 111(a), the reference to the prior application must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.”
For more information on 35 U.S.C. 111(a), visit: 35 U.S.C. 111(a).
For more information on 35 U.S.C. 371, visit: 35 U.S.C. 371.
For more information on filing deadline, visit: filing deadline.
For more information on national stage application, visit: national stage application.
If a certified copy of the priority document is not filed within the time limit in a U.S. national stage application, the following consequences may occur:
- The right to priority may be lost if the certified copy is not filed within the time period set in 37 CFR 1.55.
- However, if the certified copy is filed after the time period set in 37 CFR 1.55 but during the pendency of the application, the right to priority may be restored under certain conditions.
- According to MPEP 213.06, ‘If the certified copy is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.’
It’s crucial to file the certified copy within the specified time limit to avoid potential complications in claiming priority.
To learn more:
To learn more:
In a national stage application 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. According to 37 CFR 1.55(d)(2), this is the general rule, with some exceptions provided in paragraph (e) of the same section.
The MPEP states: In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made and a certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT with limited exceptions.
To learn more:
A certified copy of the foreign application must be filed within the time period set in 37 CFR 1.55, which is the later of four months from the filing date of the US application or sixteen months from the foreign application filing date.
The certified copy requirement will be considered satisfied in a national stage application under 35 U.S.C. 371 if a certified copy was filed in the international application and the copy is present in the national stage application. See MPEP ยง 215.
A certified copy is also not required if the foreign priority application was filed in a participating foreign intellectual property office and the USPTO retrieves a copy via the priority document exchange program. See MPEP ยง 215.01.
An interim copy of the foreign application may also be filed to meet the timeliness requirement. See 37 CFR 1.55(j) and MPEP ยง 215.02(b).
For national stage applications under 35 U.S.C. 371, the requirements for filing a certified copy of a foreign application are outlined in 37 CFR 1.55(f)(2). The MPEP states:
A certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371.
If the certified copy was not filed during the international stage, it must be filed within the later of:
- Four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f)
- Four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage
- Sixteen months from the filing date of the prior foreign application
Exceptions to these time limits are provided in paragraphs (h), (i), and (j) of 37 CFR 1.55.
To learn more:
For U.S. national stage applications derived from international applications, there are specific requirements for submitting Information Disclosure Statements (IDSs). The MPEP states:
“When filing a continuing application that claims benefit under 35 U.S.C. 120 to an international application that designated the U.S. (see MPEP ยง 1895), it will be necessary for the applicant to submit an information disclosure statement complying with 37 CFR 1.97 and 1.98 in the continuing application listing the documents cited in the international search report and/or the international preliminary examination report of the international application if applicant wishes to ensure that the information is considered by the examiner in the continuing application.”
This means that unlike regular continuing applications, where previously cited art is automatically considered, applicants must submit a new IDS in national stage applications to ensure the examiner considers documents from the international phase. For more information on the consideration of documents cited in international search reports in PCT national stage applications, refer to MPEP ยง 609.03.
To learn more:
The benefit claim process for national stage applications entering from an international application under 35 U.S.C. 371 has some specific timing requirements that differ from regular applications filed under 35 U.S.C. 111(a). The MPEP states:
“If the application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, the reference to the prior application must be made during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application.”
Key differences for national stage applications include:
- The time period for submitting the benefit claim starts from the date the national stage commenced or the date of initial submission to enter the national stage.
- There are three possible deadlines, and the applicant can use the latest of these:
- Four months from the date the national stage commenced
- Four months from the date of the initial submission to enter the national stage
- Sixteen months from the filing date of the prior application
It’s important to carefully track these dates for national stage applications to ensure timely submission of benefit claims.
For more information on 35 U.S.C. 371, visit: 35 U.S.C. 371.
For more information on national stage application, visit: national stage application.
How does a U.S. national stage application differ from a regular national application?
A U.S. national stage application is derived from an international application, while a regular national application is filed directly with the USPTO. The key differences lie in their origins and the legal provisions governing them.
As stated in MPEP 201.01:
A national application may be a U.S. national application filed under 35 U.S.C. 111(a), or a national stage application under 35 U.S.C. 371 of an international application.
Regular national applications are filed under 35 U.S.C. 111(a), while national stage applications enter the U.S. national phase from an international PCT application under 35 U.S.C. 371. National stage applications must meet specific requirements for entering the national phase, such as time limits and submission of necessary documents.
For more information on national stage application, visit: national stage application.
For more information on patent filing, visit: patent filing.
For more information on USPTO, visit: USPTO.
For international applications entering the U.S. national stage under 35 U.S.C. 371, the priority claim must be made within the time limit set by the PCT and its regulations. MPEP 213.06 states: ‘In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made and a certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT.’
If the priority claim was properly made during the international phase, it’s generally not necessary to repeat it upon national stage entry. However, the certified copy of the priority document must be furnished if not previously submitted to the International Bureau or the USPTO.
For more information on national stage application, visit: national stage application.
To ensure that references from the international search report are printed on the resulting patent, applicants must provide a separate listing of these references. According to MPEP 609.03:
“In order to have the references printed on such resulting patent, a separate listing, preferably on a PTO/SB/08 form, must be filed within the set period for reply to this Office action.”
This separate listing should be submitted within the set period for reply to the Office action or, if the application is ready for allowance, within ONE MONTH of the mailing date of the Notice of Allowability. It’s important to note that no extension of time will be granted to comply with this requirement if the application is ready for allowance.
To learn more:
In a PCT national stage application, the examiner will consider all U.S. patents, U.S. patent application publications, and U.S. pending applications cited in the international search report that are stored electronically in the USPTO’s Image File Wrapper (IFW) system. As stated in MPEP 609.03:
“The examiner will consider other documents cited in the international search report when the Form PCT/DO/EO/903 in the national stage application indicates that both the international search report and the copies of the documents are present in the national stage file.”
The examiner should indicate in the first Office action that the information has been considered. However, these citations will not be printed on the face of the patent unless they are listed on a form that can be easily captured by the Office printing contractor.
To learn more:
Generally, applicants do not need to provide a separate listing of references cited in the international search report for a PCT national stage application. According to MPEP 609.03:
“There is no requirement that the examiner list the documents on a PTO-892 form and there is no requirement for the applicant to provide a separate listing of the references.”
However, it’s important to note that if the applicant wants these references to be printed on the face of the resulting patent, they must provide a separate listing, preferably on a PTO/SB/08 form, within the set period for reply to the Office action or within one month of the mailing date of the Notice of Allowability.
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Patent Procedure (16)
For nonprovisional applications entering the national stage from an international application under 35 U.S.C. 371, the benefit claim must be made within the later of:
- Four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f)
- Four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage
- Sixteen months from the filing date of the prior application
The MPEP states: If the application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, the benefit claim must be made within the later of: (1) four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f); (2) four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage; or (3) sixteen months from the filing date of the prior application.
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The time limit for submitting a benefit claim depends on the type of application:
- For utility or plant applications filed under 35 U.S.C. 111(a), the specific reference must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.
- For national stage applications under 35 U.S.C. 371, the specific reference must be submitted during the pendency of the application and within the later of four months from the date on which the national stage commenced, four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application.
As stated in MPEP 211.02: This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c).
For more information on national stage application, visit: national stage application.
For more information on time limit, visit: time limit.
What is the deadline for submitting certified copies in a national stage application?
The deadline for submitting certified copies in a national stage application (35 U.S.C. 371) is as follows:
- Certified copies must be filed within the time limit set in 37 CFR 1.55(f).
- This is typically within the later of 4 months from the actual filing date of the application or 16 months from the filing date of the prior foreign application.
The MPEP 213.06 states: ‘A certified copy of the foreign application must be filed within the time limit set forth in 37 CFR 1.55(f).’ It’s important to note that this requirement applies unless the certified copy was previously filed in the international application and the requirements of PCT Rule 17.1(a), (b), or (b-bis) have been met.
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The deadline for submitting a benefit claim depends on the type of application:
- For utility or plant applications filed under 35 U.S.C. 111(a): Submit within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.
- For national stage applications under 35 U.S.C. 371: Submit within the later of four months from the date on which the national stage commenced, four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application.
The MPEP emphasizes: This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c).
(MPEP ยง 211)
For more information on national stage application, visit: national stage application.
The deadline for filing a benefit claim depends on the type of application:
- For applications filed under 35 U.S.C. 111(a), the reference must be submitted within the later of:
- Four months from the actual filing date of the application, or
- Sixteen months from the filing date of the prior application
- For nonprovisional applications entering the national stage from an international application under 35 U.S.C. 371, the reference must be made within the later of:
- Four months from the date on which the national stage commenced
- Four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage
- Sixteen months from the filing date of the prior application
As stated in the MPEP: “If the application is an application filed under 35 U.S.C. 111(a), the reference to the prior application must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.”
For more information on 35 U.S.C. 111(a), visit: 35 U.S.C. 111(a).
For more information on 35 U.S.C. 371, visit: 35 U.S.C. 371.
For more information on filing deadline, visit: filing deadline.
For more information on national stage application, visit: national stage application.
If a certified copy of the priority document is not filed within the time limit in a U.S. national stage application, the following consequences may occur:
- The right to priority may be lost if the certified copy is not filed within the time period set in 37 CFR 1.55.
- However, if the certified copy is filed after the time period set in 37 CFR 1.55 but during the pendency of the application, the right to priority may be restored under certain conditions.
- According to MPEP 213.06, ‘If the certified copy is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.’
It’s crucial to file the certified copy within the specified time limit to avoid potential complications in claiming priority.
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In a national stage application 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. According to 37 CFR 1.55(d)(2), this is the general rule, with some exceptions provided in paragraph (e) of the same section.
The MPEP states: In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made and a certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT with limited exceptions.
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A certified copy of the foreign application must be filed within the time period set in 37 CFR 1.55, which is the later of four months from the filing date of the US application or sixteen months from the foreign application filing date.
The certified copy requirement will be considered satisfied in a national stage application under 35 U.S.C. 371 if a certified copy was filed in the international application and the copy is present in the national stage application. See MPEP ยง 215.
A certified copy is also not required if the foreign priority application was filed in a participating foreign intellectual property office and the USPTO retrieves a copy via the priority document exchange program. See MPEP ยง 215.01.
An interim copy of the foreign application may also be filed to meet the timeliness requirement. See 37 CFR 1.55(j) and MPEP ยง 215.02(b).
For national stage applications under 35 U.S.C. 371, the requirements for filing a certified copy of a foreign application are outlined in 37 CFR 1.55(f)(2). The MPEP states:
A certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371.
If the certified copy was not filed during the international stage, it must be filed within the later of:
- Four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f)
- Four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage
- Sixteen months from the filing date of the prior foreign application
Exceptions to these time limits are provided in paragraphs (h), (i), and (j) of 37 CFR 1.55.
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For U.S. national stage applications derived from international applications, there are specific requirements for submitting Information Disclosure Statements (IDSs). The MPEP states:
“When filing a continuing application that claims benefit under 35 U.S.C. 120 to an international application that designated the U.S. (see MPEP ยง 1895), it will be necessary for the applicant to submit an information disclosure statement complying with 37 CFR 1.97 and 1.98 in the continuing application listing the documents cited in the international search report and/or the international preliminary examination report of the international application if applicant wishes to ensure that the information is considered by the examiner in the continuing application.”
This means that unlike regular continuing applications, where previously cited art is automatically considered, applicants must submit a new IDS in national stage applications to ensure the examiner considers documents from the international phase. For more information on the consideration of documents cited in international search reports in PCT national stage applications, refer to MPEP ยง 609.03.
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The benefit claim process for national stage applications entering from an international application under 35 U.S.C. 371 has some specific timing requirements that differ from regular applications filed under 35 U.S.C. 111(a). The MPEP states:
“If the application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, the reference to the prior application must be made during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application.”
Key differences for national stage applications include:
- The time period for submitting the benefit claim starts from the date the national stage commenced or the date of initial submission to enter the national stage.
- There are three possible deadlines, and the applicant can use the latest of these:
- Four months from the date the national stage commenced
- Four months from the date of the initial submission to enter the national stage
- Sixteen months from the filing date of the prior application
It’s important to carefully track these dates for national stage applications to ensure timely submission of benefit claims.
For more information on 35 U.S.C. 371, visit: 35 U.S.C. 371.
For more information on national stage application, visit: national stage application.
How does a U.S. national stage application differ from a regular national application?
A U.S. national stage application is derived from an international application, while a regular national application is filed directly with the USPTO. The key differences lie in their origins and the legal provisions governing them.
As stated in MPEP 201.01:
A national application may be a U.S. national application filed under 35 U.S.C. 111(a), or a national stage application under 35 U.S.C. 371 of an international application.
Regular national applications are filed under 35 U.S.C. 111(a), while national stage applications enter the U.S. national phase from an international PCT application under 35 U.S.C. 371. National stage applications must meet specific requirements for entering the national phase, such as time limits and submission of necessary documents.
For more information on national stage application, visit: national stage application.
For more information on patent filing, visit: patent filing.
For more information on USPTO, visit: USPTO.
For international applications entering the U.S. national stage under 35 U.S.C. 371, the priority claim must be made within the time limit set by the PCT and its regulations. MPEP 213.06 states: ‘In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made and a certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT.’
If the priority claim was properly made during the international phase, it’s generally not necessary to repeat it upon national stage entry. However, the certified copy of the priority document must be furnished if not previously submitted to the International Bureau or the USPTO.
For more information on national stage application, visit: national stage application.
To ensure that references from the international search report are printed on the resulting patent, applicants must provide a separate listing of these references. According to MPEP 609.03:
“In order to have the references printed on such resulting patent, a separate listing, preferably on a PTO/SB/08 form, must be filed within the set period for reply to this Office action.”
This separate listing should be submitted within the set period for reply to the Office action or, if the application is ready for allowance, within ONE MONTH of the mailing date of the Notice of Allowability. It’s important to note that no extension of time will be granted to comply with this requirement if the application is ready for allowance.
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In a PCT national stage application, the examiner will consider all U.S. patents, U.S. patent application publications, and U.S. pending applications cited in the international search report that are stored electronically in the USPTO’s Image File Wrapper (IFW) system. As stated in MPEP 609.03:
“The examiner will consider other documents cited in the international search report when the Form PCT/DO/EO/903 in the national stage application indicates that both the international search report and the copies of the documents are present in the national stage file.”
The examiner should indicate in the first Office action that the information has been considered. However, these citations will not be printed on the face of the patent unless they are listed on a form that can be easily captured by the Office printing contractor.
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Generally, applicants do not need to provide a separate listing of references cited in the international search report for a PCT national stage application. According to MPEP 609.03:
“There is no requirement that the examiner list the documents on a PTO-892 form and there is no requirement for the applicant to provide a separate listing of the references.”
However, it’s important to note that if the applicant wants these references to be printed on the face of the resulting patent, they must provide a separate listing, preferably on a PTO/SB/08 form, within the set period for reply to the Office action or within one month of the mailing date of the Notice of Allowability.
To learn more: