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.

Third parties cannot access an international patent application until the earliest of:

• The international publication date
• Date of receipt of the communication of the application under PCT Article 20
• Date of receipt of a copy of the application under PCT Article 22

This is specified in PCT Article 30(2)(a):

“No national Office shall allow access to the international application by third parties, unless requested or authorized by the applicant, before the earliest of the following dates: (i) date of the international publication of the international application, (ii) date of receipt of the communication of the international application under Article 20, (iii) date of receipt of a copy of the international application under Article 22.”

International patent applications filed under the PCT are generally kept confidential and not made publicly available before international publication, which occurs soon after the expiration of 18 months from the priority date, according to PCT Article 21(2)(a). The International Bureau and International Searching Authorities are not allowed to give access to the application to any person or authority before publication unless requested or authorized by the applicant, with some exceptions.

As stated in MPEP 110:

“Although most international applications are published soon after the expiration of 18 months from the priority date, PCT Article 21(2)(a), such publication does not open up the Home Copy or Search Copy to the public for inspection, except as provided in 37 CFR 1.14(g).”

A national patent office may inform third parties that it has been designated in an international application and publish that fact. However, the publication can only contain limited bibliographic data, as specified in PCT Article 30(2)(b):

“Such information or publication may, however, contain only the following data: identification of the receiving Office, name of the applicant, international filing date, international application number, and title of the invention.”

The national office still cannot allow third parties to access the full application until the conditions outlined in PCT Article 30(2)(a) are met.

The MPEP provides a table of states (countries) for which the right of priority under 35 U.S.C. 119(a)-(d) is recognized. These countries fall into three categories:

• Parties to the Patent Cooperation Treaty (PCT)
• Parties to the Paris Convention for the Protection of Industrial Property
• Members of the World Trade Organization (WTO)

The MPEP states: “Following is a table of states, i.e., countries, with respect to which the right of priority referred to in 35 U.S.C. 119(a)-(d) has been recognized.”

For the most current list of recognized countries, refer to the WIPO website at www.wipo.int/pct/en/paris_wto_pct.html.

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:

• 365(c) filing date
• PCT applications
• national stage entry
• copendency
• benefit claims

Several international agreements can form the basis for a priority claim in patent applications. The MPEP mentions:

• The Paris Convention for the Protection of Industrial Property
• The Hague Agreement Concerning the International Registration of Industrial Designs
• The Benelux Designs Convention
• The Convention on the Grant of European Patents (European Patent Office)
• The Patent Cooperation Treaty (PCT)
• The International Convention for the Protection of New Varieties of Plants (UPOV)

The MPEP states: “Under Article 4A of the Paris Convention for the Protection of Industrial Property, a right of priority may be based on an application for a patent or for the registration of a utility model or an industrial design filed under the national law of a foreign country adhering to the Convention, or on a foreign application filed under a bilateral or multilateral treaty concluded between two or more such countries.”

These agreements facilitate the international protection of intellectual property rights and enable applicants to claim priority based on applications filed in various jurisdictions.

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.

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) interacts with foreign priority claims as outlined in MPEP 213. The PCT allows applicants to file a single international patent application that can later enter the national phase in multiple countries.

Key points regarding PCT and foreign priority:

• PCT applications can claim priority from earlier national or regional applications
• The priority period for PCT applications is also 12 months from the earliest priority date
• PCT applications themselves can serve as the basis for priority claims in subsequent national or regional applications

As stated in MPEP 213, “U.S. national applications may claim priority to an international application (PCT) filed in a PCT Receiving Office other than the United States Receiving Office.” This demonstrates the flexibility of the PCT system in international patent protection strategies.

The PDX system has specific procedures for handling international applications filed under the Patent Cooperation Treaty (PCT). According to MPEP 215.01:

The USPTO will automatically attempt retrieval of international applications filed under the PCT where the receiving office is RO/AU, RO/DK, RO/ES, RO/FI, RO/IB, RO/MA or RO/SE and the applicant has provided the required WIPO DAS access code for the international application to which foreign priority is claimed.

Key points for PCT applications:

• Automatic retrieval attempts are made for certain PCT applications.
• Applies to applications filed with receiving offices: RO/AU, RO/DK, RO/ES, RO/FI, RO/IB, RO/MA, or RO/SE.
• The applicant must provide the WIPO DAS access code for the international application.
• This process streamlines priority document retrieval for eligible PCT applications.

Applicants should ensure they provide the necessary WIPO DAS access code to facilitate this automatic retrieval process.

To learn more:

• PDX
• PCT Applications
• WIPO DAS
• International Patents

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.

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 time periods for filing a priority claim depend on the type of application:

• For original applications filed under 35 U.S.C. 111(a) (other than design applications), the claim must be filed 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 foreign application. See 37 CFR 1.55(d)(1).
• For applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set in the PCT and Regulations under the PCT. See 37 CFR 1.55(d)(2) and MPEP § 213.06.
• In a design application, a claim for priority may be made at any time during the pendency of the application. See 37 CFR 1.55(g).

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).

Incorporation by reference under 37 CFR 1.57(b) has limited applicability to international patent applications:

• It is only effective for the United States
• It does not affect the international filing date
• It cannot be used to accord an international filing date
• Requests to add omitted material will not be acted upon before national stage entry

The MPEP states: “Any amendment to an international application pursuant to 37 CFR 1.57(b)(1) will be effective only as to the United States and shall have no effect on the international filing date of the application. The incorporation by reference relief provided in 37 CFR 1.57(b) cannot be relied upon to accord an international filing date to an international application that is not otherwise entitled to a filing date under PCT Article 11, and it cannot be relied upon to alter the international filing date accorded under PCT Article 11.”

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.

The MPEP provides a table of states (countries) for which the right of priority under 35 U.S.C. 119(a)-(d) is recognized. These countries fall into three categories:

• Parties to the Patent Cooperation Treaty (PCT)
• Parties to the Paris Convention for the Protection of Industrial Property
• Members of the World Trade Organization (WTO)

The MPEP states: “Following is a table of states, i.e., countries, with respect to which the right of priority referred to in 35 U.S.C. 119(a)-(d) has been recognized.”

For the most current list of recognized countries, refer to the WIPO website at www.wipo.int/pct/en/paris_wto_pct.html.

Several international agreements can form the basis for a priority claim in patent applications. The MPEP mentions:

• The Paris Convention for the Protection of Industrial Property
• The Hague Agreement Concerning the International Registration of Industrial Designs
• The Benelux Designs Convention
• The Convention on the Grant of European Patents (European Patent Office)
• The Patent Cooperation Treaty (PCT)
• The International Convention for the Protection of New Varieties of Plants (UPOV)

The MPEP states: “Under Article 4A of the Paris Convention for the Protection of Industrial Property, a right of priority may be based on an application for a patent or for the registration of a utility model or an industrial design filed under the national law of a foreign country adhering to the Convention, or on a foreign application filed under a bilateral or multilateral treaty concluded between two or more such countries.”

These agreements facilitate the international protection of intellectual property rights and enable applicants to claim priority based on applications filed in various jurisdictions.

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) interacts with foreign priority claims as outlined in MPEP 213. The PCT allows applicants to file a single international patent application that can later enter the national phase in multiple countries.

Key points regarding PCT and foreign priority:

• PCT applications can claim priority from earlier national or regional applications
• The priority period for PCT applications is also 12 months from the earliest priority date
• PCT applications themselves can serve as the basis for priority claims in subsequent national or regional applications

As stated in MPEP 213, “U.S. national applications may claim priority to an international application (PCT) filed in a PCT Receiving Office other than the United States Receiving Office.” This demonstrates the flexibility of the PCT system in international patent protection strategies.

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).

The time periods for filing a priority claim depend on the type of application:

• For original applications filed under 35 U.S.C. 111(a) (other than design applications), the claim must be filed 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 foreign application. See 37 CFR 1.55(d)(1).
• For applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set in the PCT and Regulations under the PCT. See 37 CFR 1.55(d)(2) and MPEP § 213.06.
• In a design application, a claim for priority may be made at any time during the pendency of the application. See 37 CFR 1.55(g).

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

Incorporation by reference under 37 CFR 1.57(b) has limited applicability to international patent applications:

• It is only effective for the United States
• It does not affect the international filing date
• It cannot be used to accord an international filing date
• Requests to add omitted material will not be acted upon before national stage entry

The MPEP states: “Any amendment to an international application pursuant to 37 CFR 1.57(b)(1) will be effective only as to the United States and shall have no effect on the international filing date of the application. The incorporation by reference relief provided in 37 CFR 1.57(b) cannot be relied upon to accord an international filing date to an international application that is not otherwise entitled to a filing date under PCT Article 11, and it cannot be relied upon to alter the international filing date accorded under PCT Article 11.”

MPEP 602.07 refers to MPEP § 1893.01(e) because the latter section provides more detailed information about oaths or declarations filed in the United States as a designated office. The full text of MPEP 602.07 states:

See MPEP § 1893.01(e).

This reference indicates that MPEP § 1893.01(e) contains comprehensive guidance on the requirements, procedures, and considerations for oaths or declarations in the context of international applications entering the national phase in the United States. Patent practitioners and examiners should consult this section for specific instructions and requirements related to oaths or declarations in PCT applications designating the USPTO.

To learn more:

• MPEP cross-reference
• oath requirements
• declaration requirements
• PCT applications

The MPEP provides a table of states (countries) for which the right of priority under 35 U.S.C. 119(a)-(d) is recognized. These countries fall into three categories:

• Parties to the Patent Cooperation Treaty (PCT)
• Parties to the Paris Convention for the Protection of Industrial Property
• Members of the World Trade Organization (WTO)

The MPEP states: “Following is a table of states, i.e., countries, with respect to which the right of priority referred to in 35 U.S.C. 119(a)-(d) has been recognized.”

For the most current list of recognized countries, refer to the WIPO website at www.wipo.int/pct/en/paris_wto_pct.html.

Third parties cannot access an international patent application until the earliest of:

• The international publication date
• Date of receipt of the communication of the application under PCT Article 20
• Date of receipt of a copy of the application under PCT Article 22

This is specified in PCT Article 30(2)(a):

“No national Office shall allow access to the international application by third parties, unless requested or authorized by the applicant, before the earliest of the following dates: (i) date of the international publication of the international application, (ii) date of receipt of the communication of the international application under Article 20, (iii) date of receipt of a copy of the international application under Article 22.”

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.

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:

• 365(c) filing date
• PCT applications
• national stage entry
• copendency
• benefit claims

International patent applications filed under the PCT are generally kept confidential and not made publicly available before international publication, which occurs soon after the expiration of 18 months from the priority date, according to PCT Article 21(2)(a). The International Bureau and International Searching Authorities are not allowed to give access to the application to any person or authority before publication unless requested or authorized by the applicant, with some exceptions.

As stated in MPEP 110:

“Although most international applications are published soon after the expiration of 18 months from the priority date, PCT Article 21(2)(a), such publication does not open up the Home Copy or Search Copy to the public for inspection, except as provided in 37 CFR 1.14(g).”

MPEP 602.07 is titled ‘Oath or Declaration Filed in United States as a Designated Office’. This section provides guidance on the requirements for oaths or declarations filed in the United States Patent and Trademark Office (USPTO) when it acts as a designated office for international patent applications under the Patent Cooperation Treaty (PCT).

The section directs readers to MPEP § 1893.01(e) for more detailed information. This cross-reference suggests that MPEP § 1893.01(e) contains more specific instructions or requirements related to oaths or declarations in this context.

To learn more:

• PCT applications
• international patents
• oath
• declaration
• designated office

A designated office is a national patent office of a country that has been ‘designated’ by an applicant in an international patent application filed under the Patent Cooperation Treaty (PCT). In the context of MPEP 602.07, the United States Patent and Trademark Office (USPTO) acts as a designated office when an applicant enters the national phase in the U.S. after filing an international PCT application.

When the USPTO acts as a designated office, specific requirements for oaths or declarations may apply. MPEP 602.07 directs readers to MPEP § 1893.01(e) for more detailed information on these requirements.

To learn more:

• designated office
• PCT applications
• international patents
• USPTO
• national phase

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.”

Several international agreements can form the basis for a priority claim in patent applications. The MPEP mentions:

• The Paris Convention for the Protection of Industrial Property
• The Hague Agreement Concerning the International Registration of Industrial Designs
• The Benelux Designs Convention
• The Convention on the Grant of European Patents (European Patent Office)
• The Patent Cooperation Treaty (PCT)
• The International Convention for the Protection of New Varieties of Plants (UPOV)

The MPEP states: “Under Article 4A of the Paris Convention for the Protection of Industrial Property, a right of priority may be based on an application for a patent or for the registration of a utility model or an industrial design filed under the national law of a foreign country adhering to the Convention, or on a foreign application filed under a bilateral or multilateral treaty concluded between two or more such countries.”

These agreements facilitate the international protection of intellectual property rights and enable applicants to claim priority based on applications filed in various jurisdictions.

The time periods for filing a priority claim depend on the type of application:

• For original applications filed under 35 U.S.C. 111(a) (other than design applications), the claim must be filed 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 foreign application. See 37 CFR 1.55(d)(1).
• For applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set in the PCT and Regulations under the PCT. See 37 CFR 1.55(d)(2) and MPEP § 213.06.
• In a design application, a claim for priority may be made at any time during the pendency of the application. See 37 CFR 1.55(g).

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.

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) 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) interacts with foreign priority claims as outlined in MPEP 213. The PCT allows applicants to file a single international patent application that can later enter the national phase in multiple countries.

Key points regarding PCT and foreign priority:

• PCT applications can claim priority from earlier national or regional applications
• The priority period for PCT applications is also 12 months from the earliest priority date
• PCT applications themselves can serve as the basis for priority claims in subsequent national or regional applications

As stated in MPEP 213, “U.S. national applications may claim priority to an international application (PCT) filed in a PCT Receiving Office other than the United States Receiving Office.” This demonstrates the flexibility of the PCT system in international patent protection strategies.

The PDX system has specific procedures for handling international applications filed under the Patent Cooperation Treaty (PCT). According to MPEP 215.01:

The USPTO will automatically attempt retrieval of international applications filed under the PCT where the receiving office is RO/AU, RO/DK, RO/ES, RO/FI, RO/IB, RO/MA or RO/SE and the applicant has provided the required WIPO DAS access code for the international application to which foreign priority is claimed.

Key points for PCT applications:

• Automatic retrieval attempts are made for certain PCT applications.
• Applies to applications filed with receiving offices: RO/AU, RO/DK, RO/ES, RO/FI, RO/IB, RO/MA, or RO/SE.
• The applicant must provide the WIPO DAS access code for the international application.
• This process streamlines priority document retrieval for eligible PCT applications.

Applicants should ensure they provide the necessary WIPO DAS access code to facilitate this automatic retrieval process.

To learn more:

• PDX
• PCT Applications
• WIPO DAS
• International Patents

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).

Incorporation by reference under 37 CFR 1.57(b) has limited applicability to international patent applications:

• It is only effective for the United States
• It does not affect the international filing date
• It cannot be used to accord an international filing date
• Requests to add omitted material will not be acted upon before national stage entry

The MPEP states: “Any amendment to an international application pursuant to 37 CFR 1.57(b)(1) will be effective only as to the United States and shall have no effect on the international filing date of the application. The incorporation by reference relief provided in 37 CFR 1.57(b) cannot be relied upon to accord an international filing date to an international application that is not otherwise entitled to a filing date under PCT Article 11, and it cannot be relied upon to alter the international filing date accorded under PCT Article 11.”

A national patent office may inform third parties that it has been designated in an international application and publish that fact. However, the publication can only contain limited bibliographic data, as specified in PCT Article 30(2)(b):

“Such information or publication may, however, contain only the following data: identification of the receiving Office, name of the applicant, international filing date, international application number, and title of the invention.”

The national office still cannot allow third parties to access the full application until the conditions outlined in PCT Article 30(2)(a) are met.

MPEP 602.07 refers to MPEP § 1893.01(e) because the latter section provides more detailed information about oaths or declarations filed in the United States as a designated office. The full text of MPEP 602.07 states:

See MPEP § 1893.01(e).

This reference indicates that MPEP § 1893.01(e) contains comprehensive guidance on the requirements, procedures, and considerations for oaths or declarations in the context of international applications entering the national phase in the United States. Patent practitioners and examiners should consult this section for specific instructions and requirements related to oaths or declarations in PCT applications designating the USPTO.

To learn more:

• MPEP cross-reference
• oath requirements
• declaration requirements
• PCT applications

The MPEP provides a table of states (countries) for which the right of priority under 35 U.S.C. 119(a)-(d) is recognized. These countries fall into three categories:

• Parties to the Patent Cooperation Treaty (PCT)
• Parties to the Paris Convention for the Protection of Industrial Property
• Members of the World Trade Organization (WTO)

The MPEP states: “Following is a table of states, i.e., countries, with respect to which the right of priority referred to in 35 U.S.C. 119(a)-(d) has been recognized.”

For the most current list of recognized countries, refer to the WIPO website at www.wipo.int/pct/en/paris_wto_pct.html.

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.

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:

• 365(c) filing date
• PCT applications
• national stage entry
• copendency
• benefit claims

MPEP 602.07 is titled ‘Oath or Declaration Filed in United States as a Designated Office’. This section provides guidance on the requirements for oaths or declarations filed in the United States Patent and Trademark Office (USPTO) when it acts as a designated office for international patent applications under the Patent Cooperation Treaty (PCT).

The section directs readers to MPEP § 1893.01(e) for more detailed information. This cross-reference suggests that MPEP § 1893.01(e) contains more specific instructions or requirements related to oaths or declarations in this context.

To learn more:

• PCT applications
• international patents
• oath
• declaration
• designated office

A designated office is a national patent office of a country that has been ‘designated’ by an applicant in an international patent application filed under the Patent Cooperation Treaty (PCT). In the context of MPEP 602.07, the United States Patent and Trademark Office (USPTO) acts as a designated office when an applicant enters the national phase in the U.S. after filing an international PCT application.

When the USPTO acts as a designated office, specific requirements for oaths or declarations may apply. MPEP 602.07 directs readers to MPEP § 1893.01(e) for more detailed information on these requirements.

To learn more:

• designated office
• PCT applications
• international patents
• USPTO
• national phase

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.”

Several international agreements can form the basis for a priority claim in patent applications. The MPEP mentions:

• The Paris Convention for the Protection of Industrial Property
• The Hague Agreement Concerning the International Registration of Industrial Designs
• The Benelux Designs Convention
• The Convention on the Grant of European Patents (European Patent Office)
• The Patent Cooperation Treaty (PCT)
• The International Convention for the Protection of New Varieties of Plants (UPOV)

The MPEP states: “Under Article 4A of the Paris Convention for the Protection of Industrial Property, a right of priority may be based on an application for a patent or for the registration of a utility model or an industrial design filed under the national law of a foreign country adhering to the Convention, or on a foreign application filed under a bilateral or multilateral treaty concluded between two or more such countries.”

These agreements facilitate the international protection of intellectual property rights and enable applicants to claim priority based on applications filed in various jurisdictions.

The time periods for filing a priority claim depend on the type of application:

• For original applications filed under 35 U.S.C. 111(a) (other than design applications), the claim must be filed 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 foreign application. See 37 CFR 1.55(d)(1).
• For applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set in the PCT and Regulations under the PCT. See 37 CFR 1.55(d)(2) and MPEP § 213.06.
• In a design application, a claim for priority may be made at any time during the pendency of the application. See 37 CFR 1.55(g).

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.

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) 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) interacts with foreign priority claims as outlined in MPEP 213. The PCT allows applicants to file a single international patent application that can later enter the national phase in multiple countries.

Key points regarding PCT and foreign priority:

• PCT applications can claim priority from earlier national or regional applications
• The priority period for PCT applications is also 12 months from the earliest priority date
• PCT applications themselves can serve as the basis for priority claims in subsequent national or regional applications

As stated in MPEP 213, “U.S. national applications may claim priority to an international application (PCT) filed in a PCT Receiving Office other than the United States Receiving Office.” This demonstrates the flexibility of the PCT system in international patent protection strategies.

The PDX system has specific procedures for handling international applications filed under the Patent Cooperation Treaty (PCT). According to MPEP 215.01:

The USPTO will automatically attempt retrieval of international applications filed under the PCT where the receiving office is RO/AU, RO/DK, RO/ES, RO/FI, RO/IB, RO/MA or RO/SE and the applicant has provided the required WIPO DAS access code for the international application to which foreign priority is claimed.

Key points for PCT applications:

• Automatic retrieval attempts are made for certain PCT applications.
• Applies to applications filed with receiving offices: RO/AU, RO/DK, RO/ES, RO/FI, RO/IB, RO/MA, or RO/SE.
• The applicant must provide the WIPO DAS access code for the international application.
• This process streamlines priority document retrieval for eligible PCT applications.

Applicants should ensure they provide the necessary WIPO DAS access code to facilitate this automatic retrieval process.

To learn more:

• PDX
• PCT Applications
• WIPO DAS
• International Patents

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).

Incorporation by reference under 37 CFR 1.57(b) has limited applicability to international patent applications:

• It is only effective for the United States
• It does not affect the international filing date
• It cannot be used to accord an international filing date
• Requests to add omitted material will not be acted upon before national stage entry

The MPEP states: “Any amendment to an international application pursuant to 37 CFR 1.57(b)(1) will be effective only as to the United States and shall have no effect on the international filing date of the application. The incorporation by reference relief provided in 37 CFR 1.57(b) cannot be relied upon to accord an international filing date to an international application that is not otherwise entitled to a filing date under PCT Article 11, and it cannot be relied upon to alter the international filing date accorded under PCT Article 11.”