1895 A Continuation , Divisional, or Continuation- in- Part Application of a PCT Application Designating the United States [R-08.2012]
It is possible to file a U.S. national application under 35 U.S.C. 111(a) during the pendency (prior to the abandonment) of an international application which designates the United States without completing the requirements for entering the national stage under 35 U.S.C. 371(c) . The ability to take such action is based on provisions of the United States patent law. 35 U.S.C. 363 provides that “[a]n international application designating the United States shall have the effect, from its international filing date under article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office....” 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... by the parties thereof....” It is therefore clear that an international application which designates the United States has the effect of a pending U.S. application from the international application filing date until its abandonment as to the United States. The first sentence of 35 U.S.C. 365(c) specifically provides that “[i]n accordance with the conditions and requirements of section 120 of this title,... a national application shall be entitled to the benefit of the filing date of a prior international application designating the United States.” The condition of 35 U.S.C. 120 relating to the time of filing requires the later application to be filed before the patenting or abandonment of or termination of proceedings on the first application. The filing of continuations of an international (PCT) application designating the U.S. was used primarily in instances where there was difficulty in obtaining a signed oath or declaration by the expiration of the time for entry into the national stage. Because these continuation applications historically resulted from a need to bypass the requirements of 35 U.S.C. 371 , they became known as “bypass” applications. Since applicants are now notified of missing or defective oaths or declarations and/or translations, and are given a time period to respond which is extendable under 37 CFR 1.136(a) , the use of this practice with respect to continuation applications has diminished.
Continuation-in-part applications are generally filed in instances where applicants seek to add matter to the disclosure which is not supported by the disclosure of the international application as originally filed, as new matter may not be added to a U.S. national stage application. See 37 CFR 1.121 (f).
1895.01 Handling of and Considerations in the Handling of Continuations, Divisions, and Continuations-In-Part of PCT Applications [R-08.2012]
Rather than submitting national stage application papers under 35 U.S.C. 371 , a continuing application (i.e., continuation, C-I-P, or division) under 35 U.S.C. 111(a) of the international (PCT) application may be filed. 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) (not under 37 CFR 1.53(d) ) may claim benefit of the filing date of an international application which designates the United States.
A typical time line involving a continuing application filed during the pendency of an international application is illustrated as follows:
- (A) include a specific reference to the prior international application (either in the application data sheet (37 CFR 1.76 ) or in the first sentence(s) of the specification),
- (B) be copending with the prior international application, and
- (C) have at least one inventor in common with the prior international application.
With regard to (A), the specific reference to the international application required under 35 U.S.C. 120 and 365 (c) must either be contained in the first sentence(s) of the specification following the title or included in an application data sheet. 37 CFR 1.78 (a)(2)(iii). The specific reference must identify the parent international application by international application number and international filing date and indicate the relationship of the applications (i.e., continuation, continuation-in-part, or division). See 37 CFR 1.78 (a)(2)(i)) and MPEP § 201.11 . An example of an appropriate first sentence of the specification is, for example, “This is a continuation of International Application PCT/EP2004/000000, with an international filing date of January 5, 2004, now abandoned.” The required reference must be submitted within the time period provided by 37 CFR 1.78 (a)( 2 )(ii). This time period is not extendable. A certified copy of the international application (and an English translation) of the international application may be required by the examiner to perfect the claim for benefit under 35 U.S.C. 120 and 365 (c) if the international application did not originate in the United States and such is necessary, for example, where an intervening reference is found and applied in a rejection of one or more claims. If the international application was published by the International Bureau pursuant to PCT Article 21 , then a certified copy would not normally be necessary.
If benefit under 35 U.S.C. 119 (e), and/or under 35 U.S.C. 120 and 365 (c) is being claimed to an earlier filed national application (or international application designating the U.S.) via an intermediate international application designating the U.S., then the intermediate international application must contain a specific reference to the earlier application, as required under 37 CFR 1.78 . The specific reference will usually be included on the cover page of the published international application and/or may appear in the first sentence(s) of the description of the published application. A lack of a proper reference in the published international application does not necessarily mean that a proper reference is not contained in the intermediate international application. Accordingly, the international application file (if the USPTO was the receiving Office) may have to be inspected to determine whether the requirements under 37 CFR 1.78 (a) were satisfied after publication of the international application . For example, the intermediate international application file may contain the specific reference in a separate paper filed after publication but during the pendency of the international application, or a decision granting a petition to accept a late benefit claim may be present in the application file. See MPEP § 201.11(a) . The examiner may contact the Office of PCT Legal Administration for assistance.
With regard to (B), a U.S. national application is considered copending with a prior international application designating the U.S. if the international application was pending on the filing date of the U.S. national application. Generally, except in cases where the international application has been withdrawn (either generally or as to the United States), an international application becomes abandoned as to the United States upon expiration of 30 months from the priority date (i.e., the priority date claimed in the international application or, if no priority is claimed, the international filing date) unless a proper submission under 35 U.S.C. 371 to enter the U.S. national phase is filed prior to the expiration of this 30-month period. See MPEP § 1893.01 (a)(1) and § 1893.02 . However, if the international application is one where the 20-month period from the priority date expired before April 1, 2002, then it was necessary to file a demand electing the United States prior to the expiration of 19 months from the priority date in order to extend the international phase to 30 months from the priority date. If such a demand was not timely filed, then under former 37 CFR 1.494 , such an international application became abandoned at the expiration of 20 months from the priority date unless a proper submission under 35 U.S.C. 371 to enter the U.S. national phase was made prior to the expiration of 20 months from the priority date. Accordingly, if the international application is not subject to the filing of a demand in order to delay entry into the U.S. national phase to 30 months from the priority date, then a national application filed prior to the expiration of this 30 month period will be copending with the international application unless the international application was withdrawn, either generally or as to the United States, prior to the filing of the national application. To determine whether the application was withdrawn, the examiner must either review the Home Copy of the international application file (if the USPTO was the receiving Office), or require applicant to certify that the international application was not withdrawn or considered to be withdrawn, either generally or as to the United States, prior to the filing date of the national application claiming benefit under 35 U.S.C. 120 and 365 (c) to such international application. In order to expedite examination, applicant should certify at the time of filing a national application claiming benefit under 35 U.S.C. 120 and 365 (c) to an international application that the international application has not been withdrawn. If the national application claiming benefit to the international application was filed after the expiration of this 30-month period, then there will be no copendency in the absence of a timely and proper submission to enter the U.S. national phase under 35 U.S.C. 371 . The existence of a national stage application may be checked through PALM and the records of the national stage application should be consulted to verify copendency. Additionally, if the 20-month period from the priority date of the international application expired before April 1, 2002 and the national application claiming benefit under 35 U.S.C. 120 and 365 (c) was filed later than 20 months from the priority date of the international application, the applicant may be required to submit proof of the filing of a demand electing the United States within 19 months from the priority date. This proof may be in the form of a copy of the “Notification of Receipt of Demand by Competent International Preliminary Examining Authority” (Form PCT/IPEA/402) showing the demand was received prior to the expiration of 19 months from the priority date, and a copy of the “Notification Concerning Elected Offices Notified of Their Election” (Form PCT/IB/332) showing the election of the United States. If the parent international application was not copending (i.e., abandoned or withdrawn), benefit under 35 U.S.C. 120 is not possible.
With regard to (C), inventors will normally be identified on the cover page of the published international application. In addition, such information is indicated in the PCT Gazette , which is available in electronic form from WIPO’s web site (www.wipo.int/pct/en/index.html).
PRIORITY CLAIMS UNDER 35 U.S.C. 119 (a)-(d)
A claim for foreign priority under 35 U.S.C. 119 (a)-(d) must be made in the continuing application in order to obtain the benefit of the filing date of the prior filed foreign application. This is true regardless of whether such a claim was made in the parent international application. A foreign priority claim is proper in the continuing application if the foreign application was filed within 12 months prior to the filing of the continuing application or within 12 months prior to the international filing date of the parent international application. In addition, the required claim must be made within the time period set forth in 37 CFR 1.55 (a)(1). This time period is not extendable. See MPEP § 201.14 . A certified copy of any foreign priority document must be provided by the applicant or furnished in accordance with 37 CFR 1.55 (d) unless the parent international application has entered the national stage under 35 U.S.C. 371 and the national stage application contains a photocopy of the priority document from the International Bureau. See MPEP § 1893.03(c) . In such case, the applicant, in the continuing application, may state that the priority document is contained in the national stage application.
For a discussion of U.S. national applications filed under 35 U.S.C. 111 (a) having foreign priority claims under 35 U.S.C. 119 (a)-(d) and 365 (a) to a prior international application designating at least one country other than the United States, see MPEP § 201.13(b) .