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 (6)
What is the significance of the ‘365(c)’ filing date in claiming benefit of a nonprovisional application?
The ‘365(c)’ filing date is crucial when claiming the benefit of a nonprovisional application that was filed as a PCT application and entered the national stage. According to MPEP 211.01(b):
‘If the prior nonprovisional application is an international application that was filed as a PCT application and entered the national stage under 35 U.S.C. 371, the 365(c) filing date of the international application is the filing date to be used in determining copendency.’
This means that when determining if applications are copendent for benefit claims, the PCT filing date (365(c) date) is used rather than the U.S. national stage entry date. This can be significant for maintaining continuous priority chains in international patent applications.
To learn more:
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.
Failure to comply with the requirements of 35 U.S.C. 371(c) has serious consequences for an international application entering the national stage in the United States. According to MPEP 211.01(c), which cites 35 U.S.C. 371(d):
35 U.S.C. 371(d) indicates that failure to timely comply with the requirements of 35 U.S.C. 371(c) ‘shall be regarded as abandonment of the application by the parties thereof.’
This means that if an applicant does not meet the requirements for entering the national stage, such as submitting the required documents and fees within the specified time limits, the application will be considered abandoned. Abandonment results in the loss of the application’s filing date and any associated priority claims. It’s crucial for applicants to carefully follow the national stage entry requirements to avoid unintentional abandonment of their applications.
To learn more:
To learn more:
The abandonment of an international application in the United States is governed by specific legal provisions. According to MPEP 211.01(c), which cites 35 U.S.C. 371(d):
35 U.S.C. 371(d) indicates that failure to timely comply with the requirements of 35 U.S.C. 371(c) ‘shall be regarded as abandonment of the application by the parties thereof.’
This means that an international application designating the United States will be considered abandoned if the applicant fails to meet the requirements for entering the national stage under 35 U.S.C. 371(c) within the specified time limits. These requirements typically include submitting necessary documents, paying required fees, and providing an English translation of the application if it was not originally filed in English.
For more information on national stage entry, visit: national stage entry.
A Patent Cooperation Treaty (PCT) application can become a national application in the United States when certain conditions are met. According to MPEP 201.01:
‘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’ becomes a national application.
This process, known as ‘national stage entry,’ involves the following steps:
- Filing the appropriate documents with the USPTO
- Paying the required national fee
- Providing an English translation if the international application was not filed in English
Once these requirements are fulfilled, the international application effectively becomes a U.S. national application and is processed accordingly.
For more information on national stage entry, visit: national stage entry.
For more information on patent procedure, visit: patent procedure.
For more information on USPTO, visit: USPTO.
Can a delayed benefit claim be filed for an international application entering the national stage?
Yes, a delayed benefit claim can be filed for an international application entering the national stage, but specific requirements must be met. The MPEP 211.04 provides guidance on this:
‘For international applications 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…However, if an applicant fails to make a proper benefit claim within the later of four months from the actual filing date of the national stage application or sixteen months from the filing date of the prior-filed application, the benefit claim may be accepted if the applicant files a petition under 37 CFR 1.78.’
This means that while there are specific timeframes for filing benefit claims in national stage applications, if these deadlines are missed, a petition under 37 CFR 1.78 can be filed to request acceptance of the delayed benefit claim. The petition must meet all requirements, including demonstrating that the delay was unintentional.
To learn more:
MPEP 200 - Types and Status of Application; Benefit and Priority Claims (1)
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
- It cannot be relied upon to accord an international filing date or alter the filing date under
PCT Article 11 - No request to add omitted material will be acted on prior to national stage entry under
37 CFR 1.491or filing of a US application claiming benefit of the international application
n
n
n
MPEP 201 - Types of Applications (2)
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.
A Patent Cooperation Treaty (PCT) application can become a national application in the United States when certain conditions are met. According to MPEP 201.01:
‘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’ becomes a national application.
This process, known as ‘national stage entry,’ involves the following steps:
- Filing the appropriate documents with the USPTO
- Paying the required national fee
- Providing an English translation if the international application was not filed in English
Once these requirements are fulfilled, the international application effectively becomes a U.S. national application and is processed accordingly.
For more information on national stage entry, visit: national stage entry.
For more information on patent procedure, visit: patent procedure.
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) (1)
The abandonment of an international application in the United States is governed by specific legal provisions. According to MPEP 211.01(c), which cites 35 U.S.C. 371(d):
35 U.S.C. 371(d) indicates that failure to timely comply with the requirements of 35 U.S.C. 371(c) ‘shall be regarded as abandonment of the application by the parties thereof.’
This means that an international application designating the United States will be considered abandoned if the applicant fails to meet the requirements for entering the national stage under 35 U.S.C. 371(c) within the specified time limits. These requirements typically include submitting necessary documents, paying required fees, and providing an English translation of the application if it was not originally filed in English.
For more information on national stage entry, visit: national stage entry.
MPEP 217-Incorporation by Reference Under 37 CFR 1.57(b) (1)
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
- It cannot be relied upon to accord an international filing date or alter the filing date under
PCT Article 11 - No request to add omitted material will be acted on prior to national stage entry under
37 CFR 1.491or filing of a US application claiming benefit of the international application
n
n
n
Patent Law (13)
What is the significance of the ‘365(c)’ filing date in claiming benefit of a nonprovisional application?
The ‘365(c)’ filing date is crucial when claiming the benefit of a nonprovisional application that was filed as a PCT application and entered the national stage. According to MPEP 211.01(b):
‘If the prior nonprovisional application is an international application that was filed as a PCT application and entered the national stage under 35 U.S.C. 371, the 365(c) filing date of the international application is the filing date to be used in determining copendency.’
This means that when determining if applications are copendent for benefit claims, the PCT filing date (365(c) date) is used rather than the U.S. national stage entry date. This can be significant for maintaining continuous priority chains in international patent applications.
To learn more:
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.
If the national stage requirements are not met within the time limit, the application will be considered abandoned. However, there are provisions for reviving an abandoned application under certain circumstances.
MPEP 601.04 explains: “If the basic national fee and copy of the international application are not filed by the expiration of the applicable time period set in 35 U.S.C. 371(b), the application will be considered to be abandoned.” However, the MPEP also notes that “a petition to revive under 37 CFR 1.137 may be granted if the delay was unintentional.”
To learn more:
If an applicant misses the 30-month deadline for national stage entry in the United States, the consequences can be severe. According to MPEP 601.04:
Failure to timely comply with the requirements of 35 U.S.C. 371(c) results in abandonment of the application.
This means that if the applicant fails to submit the required documents and fees within the 30-month period, the application will be considered abandoned. However, the MPEP also provides a potential remedy:
Pursuant to 35 U.S.C. 371(d), the Commissioner may accept the required national stage requirements later than 30 months from the priority date if these requirements are submitted prior to the filing of the Demand for International Preliminary Examination.
It’s crucial to note that this remedy is discretionary and not guaranteed. Applicants should always strive to meet the 30-month deadline to avoid potential loss of rights.
To learn more:
Failure to comply with the requirements of 35 U.S.C. 371(c) has serious consequences for an international application entering the national stage in the United States. According to MPEP 211.01(c), which cites 35 U.S.C. 371(d):
35 U.S.C. 371(d) indicates that failure to timely comply with the requirements of 35 U.S.C. 371(c) ‘shall be regarded as abandonment of the application by the parties thereof.’
This means that if an applicant does not meet the requirements for entering the national stage, such as submitting the required documents and fees within the specified time limits, the application will be considered abandoned. Abandonment results in the loss of the application’s filing date and any associated priority claims. It’s crucial for applicants to carefully follow the national stage entry requirements to avoid unintentional abandonment of their applications.
To learn more:
To learn more:
For national stage entry in the United States, the following documents are required:
- A copy of the international application (if not previously communicated by the International Bureau)
- An English translation of the international application (if not in English)
- The basic national fee
- An oath or declaration of the inventors
- A surcharge if the basic national fee or oath/declaration is filed later than 30 months from the priority date
According to MPEP 601.04: “A translated copy of the international application and the basic national fee are required to be filed with the U.S. Designated or Elected Office not later than the expiration of 30 months from the priority date.”
To learn more:
The abandonment of an international application in the United States is governed by specific legal provisions. According to MPEP 211.01(c), which cites 35 U.S.C. 371(d):
35 U.S.C. 371(d) indicates that failure to timely comply with the requirements of 35 U.S.C. 371(c) ‘shall be regarded as abandonment of the application by the parties thereof.’
This means that an international application designating the United States will be considered abandoned if the applicant fails to meet the requirements for entering the national stage under 35 U.S.C. 371(c) within the specified time limits. These requirements typically include submitting necessary documents, paying required fees, and providing an English translation of the application if it was not originally filed in English.
For more information on national stage entry, visit: national stage entry.
What are the basic requirements for entering the national stage in the US?
To enter the national stage in the United States, applicants must fulfill several basic requirements. According to the MPEP:
- File a copy of the international application (unless previously communicated by the International Bureau or waived)
- Submit an English language translation of the international application (if not in English)
- Pay the basic national fee
- Submit an oath or declaration of the inventor(s)
The MPEP states: For national stage applications having an international filing date on or after September 16, 2012, the requirement for the inventor’s oath or declaration or substitute statement has been eliminated as a requirement for completing national stage entry. The inventor’s oath or declaration is not required until the application is otherwise in condition for allowance.
It’s important to note that while the inventor’s oath or declaration is not required for initial national stage entry, it must be submitted before the application can be allowed.
To learn more:
The 30-month period for national stage entry is calculated from the priority date of the international application. The priority date is typically the filing date of the earliest application whose priority is claimed in the international application.
MPEP 601.04 states: “For most applications, the 30-month time period for entry into the national stage expires on the same day of the month as the date of the priority claim in the 30th subsequent month.” However, it’s important to note that if the 30-month period expires on a Saturday, Sunday, or federal holiday, the period is extended to the next succeeding business day.
To learn more:
The inventorship of an international application entering the national stage under 35 U.S.C. 371 is determined according to 37 CFR 1.41(e), which states:
The inventorship of an international application entering the national stage under 35 U.S.C. 371 is the inventor or joint inventors set forth in the application data sheet in accordance with § 1.76 filed with the initial submission under 35 U.S.C. 371.
This means that applicants can change inventorship as to the U.S. at the time of national stage entry by simply filing an application data sheet naming the inventor or joint inventors with the initial submission under 35 U.S.C. 371.
If no application data sheet is provided, the inventorship is the inventor or joint inventors set forth in the international application, including any changes made under PCT Rule 92bis. It’s important to note that 37 CFR 1.41(e) does not allow naming inventors via the inventor’s oath or declaration if an application data sheet is not provided.
To learn more:
A Patent Cooperation Treaty (PCT) application can become a national application in the United States when certain conditions are met. According to MPEP 201.01:
‘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’ becomes a national application.
This process, known as ‘national stage entry,’ involves the following steps:
- Filing the appropriate documents with the USPTO
- Paying the required national fee
- Providing an English translation if the international application was not filed in English
Once these requirements are fulfilled, the international application effectively becomes a U.S. national application and is processed accordingly.
For more information on national stage entry, visit: national stage entry.
For more information on patent procedure, visit: patent procedure.
For more information on USPTO, visit: USPTO.
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
- It cannot be relied upon to accord an international filing date or alter the filing date under
PCT Article 11 - No request to add omitted material will be acted on prior to national stage entry under
37 CFR 1.491or filing of a US application claiming benefit of the international application
n
n
n
Can a delayed benefit claim be filed for an international application entering the national stage?
Yes, a delayed benefit claim can be filed for an international application entering the national stage, but specific requirements must be met. The MPEP 211.04 provides guidance on this:
‘For international applications 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…However, if an applicant fails to make a proper benefit claim within the later of four months from the actual filing date of the national stage application or sixteen months from the filing date of the prior-filed application, the benefit claim may be accepted if the applicant files a petition under 37 CFR 1.78.’
This means that while there are specific timeframes for filing benefit claims in national stage applications, if these deadlines are missed, a petition under 37 CFR 1.78 can be filed to request acceptance of the delayed benefit claim. The petition must meet all requirements, including demonstrating that the delay was unintentional.
To learn more:
Patent Procedure (13)
What is the significance of the ‘365(c)’ filing date in claiming benefit of a nonprovisional application?
The ‘365(c)’ filing date is crucial when claiming the benefit of a nonprovisional application that was filed as a PCT application and entered the national stage. According to MPEP 211.01(b):
‘If the prior nonprovisional application is an international application that was filed as a PCT application and entered the national stage under 35 U.S.C. 371, the 365(c) filing date of the international application is the filing date to be used in determining copendency.’
This means that when determining if applications are copendent for benefit claims, the PCT filing date (365(c) date) is used rather than the U.S. national stage entry date. This can be significant for maintaining continuous priority chains in international patent applications.
To learn more:
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.
If the national stage requirements are not met within the time limit, the application will be considered abandoned. However, there are provisions for reviving an abandoned application under certain circumstances.
MPEP 601.04 explains: “If the basic national fee and copy of the international application are not filed by the expiration of the applicable time period set in 35 U.S.C. 371(b), the application will be considered to be abandoned.” However, the MPEP also notes that “a petition to revive under 37 CFR 1.137 may be granted if the delay was unintentional.”
To learn more:
If an applicant misses the 30-month deadline for national stage entry in the United States, the consequences can be severe. According to MPEP 601.04:
Failure to timely comply with the requirements of 35 U.S.C. 371(c) results in abandonment of the application.
This means that if the applicant fails to submit the required documents and fees within the 30-month period, the application will be considered abandoned. However, the MPEP also provides a potential remedy:
Pursuant to 35 U.S.C. 371(d), the Commissioner may accept the required national stage requirements later than 30 months from the priority date if these requirements are submitted prior to the filing of the Demand for International Preliminary Examination.
It’s crucial to note that this remedy is discretionary and not guaranteed. Applicants should always strive to meet the 30-month deadline to avoid potential loss of rights.
To learn more:
Failure to comply with the requirements of 35 U.S.C. 371(c) has serious consequences for an international application entering the national stage in the United States. According to MPEP 211.01(c), which cites 35 U.S.C. 371(d):
35 U.S.C. 371(d) indicates that failure to timely comply with the requirements of 35 U.S.C. 371(c) ‘shall be regarded as abandonment of the application by the parties thereof.’
This means that if an applicant does not meet the requirements for entering the national stage, such as submitting the required documents and fees within the specified time limits, the application will be considered abandoned. Abandonment results in the loss of the application’s filing date and any associated priority claims. It’s crucial for applicants to carefully follow the national stage entry requirements to avoid unintentional abandonment of their applications.
To learn more:
To learn more:
For national stage entry in the United States, the following documents are required:
- A copy of the international application (if not previously communicated by the International Bureau)
- An English translation of the international application (if not in English)
- The basic national fee
- An oath or declaration of the inventors
- A surcharge if the basic national fee or oath/declaration is filed later than 30 months from the priority date
According to MPEP 601.04: “A translated copy of the international application and the basic national fee are required to be filed with the U.S. Designated or Elected Office not later than the expiration of 30 months from the priority date.”
To learn more:
The abandonment of an international application in the United States is governed by specific legal provisions. According to MPEP 211.01(c), which cites 35 U.S.C. 371(d):
35 U.S.C. 371(d) indicates that failure to timely comply with the requirements of 35 U.S.C. 371(c) ‘shall be regarded as abandonment of the application by the parties thereof.’
This means that an international application designating the United States will be considered abandoned if the applicant fails to meet the requirements for entering the national stage under 35 U.S.C. 371(c) within the specified time limits. These requirements typically include submitting necessary documents, paying required fees, and providing an English translation of the application if it was not originally filed in English.
For more information on national stage entry, visit: national stage entry.
What are the basic requirements for entering the national stage in the US?
To enter the national stage in the United States, applicants must fulfill several basic requirements. According to the MPEP:
- File a copy of the international application (unless previously communicated by the International Bureau or waived)
- Submit an English language translation of the international application (if not in English)
- Pay the basic national fee
- Submit an oath or declaration of the inventor(s)
The MPEP states: For national stage applications having an international filing date on or after September 16, 2012, the requirement for the inventor’s oath or declaration or substitute statement has been eliminated as a requirement for completing national stage entry. The inventor’s oath or declaration is not required until the application is otherwise in condition for allowance.
It’s important to note that while the inventor’s oath or declaration is not required for initial national stage entry, it must be submitted before the application can be allowed.
To learn more:
The 30-month period for national stage entry is calculated from the priority date of the international application. The priority date is typically the filing date of the earliest application whose priority is claimed in the international application.
MPEP 601.04 states: “For most applications, the 30-month time period for entry into the national stage expires on the same day of the month as the date of the priority claim in the 30th subsequent month.” However, it’s important to note that if the 30-month period expires on a Saturday, Sunday, or federal holiday, the period is extended to the next succeeding business day.
To learn more:
The inventorship of an international application entering the national stage under 35 U.S.C. 371 is determined according to 37 CFR 1.41(e), which states:
The inventorship of an international application entering the national stage under 35 U.S.C. 371 is the inventor or joint inventors set forth in the application data sheet in accordance with § 1.76 filed with the initial submission under 35 U.S.C. 371.
This means that applicants can change inventorship as to the U.S. at the time of national stage entry by simply filing an application data sheet naming the inventor or joint inventors with the initial submission under 35 U.S.C. 371.
If no application data sheet is provided, the inventorship is the inventor or joint inventors set forth in the international application, including any changes made under PCT Rule 92bis. It’s important to note that 37 CFR 1.41(e) does not allow naming inventors via the inventor’s oath or declaration if an application data sheet is not provided.
To learn more:
A Patent Cooperation Treaty (PCT) application can become a national application in the United States when certain conditions are met. According to MPEP 201.01:
‘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’ becomes a national application.
This process, known as ‘national stage entry,’ involves the following steps:
- Filing the appropriate documents with the USPTO
- Paying the required national fee
- Providing an English translation if the international application was not filed in English
Once these requirements are fulfilled, the international application effectively becomes a U.S. national application and is processed accordingly.
For more information on national stage entry, visit: national stage entry.
For more information on patent procedure, visit: patent procedure.
For more information on USPTO, visit: USPTO.
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
- It cannot be relied upon to accord an international filing date or alter the filing date under
PCT Article 11 - No request to add omitted material will be acted on prior to national stage entry under
37 CFR 1.491or filing of a US application claiming benefit of the international application
n
n
n
Can a delayed benefit claim be filed for an international application entering the national stage?
Yes, a delayed benefit claim can be filed for an international application entering the national stage, but specific requirements must be met. The MPEP 211.04 provides guidance on this:
‘For international applications 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…However, if an applicant fails to make a proper benefit claim within the later of four months from the actual filing date of the national stage application or sixteen months from the filing date of the prior-filed application, the benefit claim may be accepted if the applicant files a petition under 37 CFR 1.78.’
This means that while there are specific timeframes for filing benefit claims in national stage applications, if these deadlines are missed, a petition under 37 CFR 1.78 can be filed to request acceptance of the delayed benefit claim. The petition must meet all requirements, including demonstrating that the delay was unintentional.
To learn more: