You are here:  Ed9 08.2017 Guidebook  » Chapter 1800

1893.03 Prosecution of U.S. National Stage Applications Before the Examiner

MPEP SECTION SUMMARY National stage applications having paid therein the search fee and examination fee may be amended subsequent to the date of commencement of national stage processing only to the extent necessary to eliminate objections as to form or to cancel rejected claims. Such national stage applications will be advanced out of turn for examination.

  Section Frequency Chart

Once the national stage application has been taken up by the examiner, prosecution proceeds in the same manner as for a domestic application with the exceptions that:

• (A) the international filing date (or, if appropriate, the priority date) is the date to keep in mind when searching the prior art; and
  
• (B) unity of invention proceeds as under 37 CFR 1.475.
  

 

MPEP SECTION SUMMARY Applicant’s initial submission under 35 U.S.C. 371 must be identified as a submission to enter the national stage under 35 U.S.C. 371. If the applicant wishes the application to be treated as a filing under 35 U.S.C. 111(a), the originally filed application papers need indicate simply that the papers are for a new U.S. patent application.

If, however, applicant is submitting papers for entry into the national stage of a PCT application, or to establish an effective date for provisional rights resulting from the filing of a PCT application under 35 U.S.C. 154(d), applicant must so state.

 

MPEP SECTION SUMMARY An international application designating the U.S. has two stages (international and national) with the filing date being the same in both stages. Often the date of entry into the national stage is confused with the filing date. National stage applications are ordinarily taken up for action based on the date of entry into the national phase.

A request to change the applicant under 37 CFR 1.46(c)(2) must include an ADS specifying the corrected applicant and a statement.

• The statement must be furnished before or concurrently with the ADS specifying the corrected applicant.

 

MPEP SECTION SUMMARY A U.S. national stage application may be entitled to: (A) a right of priority under 35 U.S.C. 119(a) and 365(b) based on a prior foreign application or international application designating at least one country other than the United States; and (B) the benefit of an earlier filed U.S. national application or international application designating the United States.

I. RIGHT OF PRIORITY UNDER 35 U.S.C. 119(a) and 365(b)

A U.S. national stage application shall be entitled to a right of priority based on a prior foreign application or international application designating at least one country other than the United States in accordance with the conditions and requirements of 35 U.S.C. 119(a) and the treaty and the PCT regulations.

To obtain priority in the U.S. national stage application to such applications, the priority must have been timely claimed in the international stage of the international application.

Note that in U.S. national stage applications it is permissible, but not required, to present the claim for priority in an application data sheet.

II. THE CERTIFIED COPY

The requirement for a certified copy of the foreign priority application is normally fulfilled by applicant providing a certified copy to the receiving Office or to the International Bureau, or by applicant requesting the receiving Office to prepare and transmit the priority document to the International Bureau if the receiving Office issued the priority document, or by applicant requesting the International Bureau to obtain the priority document from a digital library.

III. BENEFIT CLAIM UNDER 35 U.S.C. 119(e), OR 120 AND 365(c)

A national stage application may include a benefit claim under 35 U.S.C. 119(e), or 120 and 365(c) to a prior U.S. national application or under 35 U.S.C. 120 and 365(c) to a prior international application designating the U.S.

The conditions for according benefit under 35 U.S.C. 120 are similar regardless of whether the U.S. national application is a national stage application submitted under 35 U.S.C. 371 or a national application filed under 35 U.S.C. 111(a).

A prior filed nonprovisional application is copending with the national stage application if the prior U.S. national application was pending on the international filing date of the national stage application.

A prior-filed international application designating the United States of America is copending with the national stage application if the prior international application was not abandoned or withdrawn, either generally or as to the United States, on the international filing date of the national stage application.

 

MPEP SECTION SUMMARY If the examiner finds that a national stage application lacks unity of invention, the examiner may in an Office action require the applicant in the response to that action to elect the invention to which the claims shall be restricted. Such requirement may be made before any action on the merits but may be made at any time before the final action at the discretion of the examiner. Examiners are reminded that unity of invention is applicable in international applications (both Chapter I and II) and in national stage applications.

 

 

MPEP SECTION SUMMARY The national stage application includes documents communicated by the International Bureau and submissions from applicant. This section covers the publication of the international application along with the international preliminary examination report and the international preliminary report on patentability.

I. THE PUBLICATION OF THE INTERNATIONAL APPLICATION

The publication of the international application includes

• (A) a cover page with the applicant/inventor data, the application data (application number, filing date, etc.) and the Abstract (and, if appropriate, a figure of drawing),
  
• (B) the description, claims and drawing parts of the international application, and
  
• (C) the search report, if available.

II. THE INTERNATIONAL PRELIMINARY EXAMINATION REPORT AND THE INTERNATIONAL PRELIMINARY REPORT ON PATENTABILITY (CHAPTER I AND II)

When an international preliminary examination is performed by an International Preliminary Examining Authority (IPEA), an international preliminary examination report (IPER) is and sent to the elected Offices.

If the applicant did not timely file a demand for international preliminary examination with the IPEA, then an “International Preliminary Report on Patentability (Chapter I of the Patent Cooperation Treaty)” reflecting the International Searching Authority’s (ISA’s) non-binding opinion regarding novelty, inventive step and industrial applicability is sent to the designated Offices.

 

MPEP SECTION SUMMARY In the absence of an application data sheet or preliminary amendment changing the title, the Office will use the title of the invention that appears on the first page of the description of the published international application or the title that appears on the first page of the description of the English translation of the international application in preparing the official filing receipt. Further details on where the title of the invention will come from are outlined in this section.

If the title does not appear on the first page of the description, and an application data sheet or preliminary amendment changing the title has not been furnished, then the title will be taken from the cover page of the published international application.

• If applicant furnishes an application data sheet or preliminary amendment changing the title, the Office will use the title as indicated in such document in preparing the official filing receipt.
  
• If applicant submits both an application data sheet and a preliminary amendment, the later filed document will govern.
• An application data sheet will govern over a concurrently filed preliminary amendment

 

MPEP SECTION SUMMARY The drawings for the national stage application must comply with the Patent Cooperation Treaty. However, the examiner does have the authority to require new drawings if the drawings were published without meeting all requirements under the PCT for drawings.

 

MPEP SECTION SUMMARY The duty to disclose information material to patentability is placed on individuals associated with the filing and prosecution of a national stage application in the same manner as for a domestic national application. When an international application is filed under the Patent Cooperation Treaty (PCT), prior art documents may be cited by the examiner in the international search report and/or the international preliminary examination report. It is desirable for the U.S. examiner to consider the documents cited in the international application when examining the U.S. national stage application or when examining an application filed under 35 U.S.C. 111(a) which claims the benefit of the international application.

 

» 1895 A continuation, divisional, or continuation-in-part application of a PCT application designating the United States