The Patent Cooperation Treaty (PCT) establishes a system for filing international patent applications. PCT is applicable to utility patents only, not design patents.
- A PCT application that designates the US is a US patent application, even if it is filed in another receiving office.
- The 102(b) statutory bar is measured back from the PCT filing date
- R1.48 may not be used to correct inventorship in a national stage application where the inventors were named erroneously in the application (i.e., the national stage of PCT application).
- Section 365 (c) is a special case. An international application (PCT) may be treated as the parent application until 30 months from the international filing date, and an applicant may file a continuation application within that time.
- For applications filed on or after 11/29/00, if any claim for benefit is made to a prior PCT application, the first sentence of the specification must state whether the application was published in the English language. (This does not apply to the national stage of a PCT application.)
- The PCT application is published.
- A PCT application may claim priority to an earlier filed US application, and a US application may claim priority to an earlier filed PCT application.
International Applications Filed in US
Who – A PCT application designating the US must include one applicant who is a resident or national of the US, and the application must be made in name of inventors.
How to file – PCT applications may not be filed via fax
What to file –
1) PCT request,
2) abstract and filing fees are typically paid upon filing but may be paid subsequently
3) the priority claim should be made when filing the application; if priority is to a prior US application, a certified copy of the priority application to the International Bureau will be submitted
4) filing implicitly carries a request for a foreign filing license
For a filing date, you need –
1) indication that at least one applicant is a resident or national
2) indication that app is an international app
3) designation of at least one contracting state
4) name of applicants
5) description in English
7) at least one claim
if the app designate US, name, address, signature of EACH inventor (or attorney) and any app to which domestic priority is claimed shall be included
9) indication as to which international search authority
Chapter I – the following events occur or may occur:
- the ISA determines whether there is unity of invention
- the ISA establishes a search report
- the applicant has one opportunity to amend the claims within 2 months after establishment of search report
- the application is published at 18 months
- applicant may file a demand for Chapter II proceedings (19 month)
- applicant may enter the national stage in any designated state (30 month)
- a Chapter II demand may be filed via fax
- applicant may demand examination for all or fewer of the states originally designated; these states become elected states
- if the applicant files a chapter II demand by the 19 month date, the application will be subjected to international preliminary examination before an international preliminary examining authority (IPEA)
- the IPEA will usually issue a written opinion based on the search report and other aspects of the application (optional)
- the applicant has the opportunity to reply to the written opinion, such reply may include arguments and amendments to the claims
- the international preliminary examination report (IPER) will issue
- the written opinion will discuss novelty, inventive step, and industrial applicability, as well as unity of invention and formal matters
- the IPER will provide a statement as to novelty, inventive step, and industrial applicability; it is not a statement as to patentability
National Stage – 365(c)
Deadline to enter national stage is 30 months from first priority date/PCT filing date. To enter US national stage, applicant must file: 1) fee, 2) when required, a copy of the international application and English translation, 3) when required, amendments with English translations, and 4) oath/declaration of the inventor. In practice, usually the fee and cover sheet are all that is required by the 30-month deadline.
A petition to revive may be filed if the application does not meet the necessary requirements by the 30-month date.
The application is subject to publication if the PCT application was filed on or after 11/29/00.
It is possible to file an app in the US and make it international in scope (an IA such that it can be valid in a PCT member country which includes 120 other countries), or an international app that was filed in a foreign country can be brough to the US and be able to benefit from its original international effective filing date (102(e) in action).
Main steps in the PCT: (more details below).
- 1. The IA must be filed in a receiving office (RO) in a member country of the PCT. In the U.S. the USPTO may act as the receiving office.
- 2. After going to the receiving office, the app is sent to the International Searching Authority (ISA). The ISA does an initial prior-art search. In the U.S., an app will usually be able to either get the USPTO, or the European Patent Office to do the International search. The ISA does a search, and also issues a preliminary & non-binding opinion as to whether it thinks the patent is actually novel, involves an (obviousness?), involves an inventive step (obviousness?), and finally if the app is industrially applicable (sounds like a proxy for utility.
- 3. After the prior art search, the app goes to the International Bureau (IB). The IB is the central office for the IA, and usually at the expiration of 18 months of the priority date (original filing date of the IA) it will publish the application. The IB is also the central point from which copies of the app get sent to member countries (like the U.S.)
- Amendments to claims: There is a 2 month limit on amending claims after the ISA (usually to get the amendments put in before the 18 month publishing date).
- 4. After the priority date is given, the applicant has 30 months to select a Designated Office. (DO) This is where the app actually comes onto the national stage (35 U.S.C. 371 in the U.S.). By meeting the requirements to come onto the national stage within 30 months of the pirority date the app can come here.
- 5. OPTIONALLY: The applicant may desire there to be an international preliminary examination of the patent app. The applicant can request this by filling out a Demand, the demand has to be filed within 3 months of the ISA, or 22 months of the original priority date. The demand goes to the International Preliminary Examination Authority (IPEA), and the USPTO acts as the IPEA for international apps that are filed in the U.S. (where the US is the original RO). The preliminary exam allows the examiner to make comments on:
- 1. lack of unity of invention;
- 2. note errors;
- 3. issue written opinions on the novelty, ‘inventive step’, and ‘industrial applicability’ of each claim;
- 4. TIME: Even with this optional step, the applicant still must meet the national stage requirements within 30 months of the original priority date (this optional step does not extend that deadline in any way).
1803: The Publication by the IB is not required if the US is the only country designated in the IA. (This means that for apps that only designate the US the app will not be published after 18 months since it is not necessary).
1805: Where to file an IA (35 U.S.C. 361):
- Remember: The IA cannot be initially filed in the US (with the USPTO acting as the RO) unless at least one applicant is a citizen or resident of the U.S.
- Because of the fact that the U.S. requires inventors to at least sign oaths/decls on the patent (other countries do not require this) the applicant in this case has to be an inventor (at least 1 inventor is a U.S. citizen/resident). (This is a case of U.S. patent law being stricter than what the PCT requires)
- Remember the 37 CFR 1.10 Express Mail provisions. They do apply to IAs (like the date of mailing will be the effective received date). However, the Mailing Certificate practice does not apply to IAs.
Faxes: They cannot be used for transmitting apps, drawings, copies of the app (needed for entering the national stage). However, faxes may be used for other transmissions, the fax certificate does not apply for IA documents.
1810: Getting the International Filing Date:
37 CFR 1.431; 35 U.S.C. 363, 373; PCT 11
- 1. At least one applicant must be a U.S. Resident to use the U.S. as an RO and get an International Filing Date
- 2. The IA must be in English
- 3. The IA must contain at least the following:
- 1. An indication that the app is intended to be an IA
- 2. The designation of at least one Contracting State (member) of the Patent Cooperation Union;
- 3. The name of the applicant (before 20040101 this had to be all applicants, but on or after 20040101 it only needs to be 1 applicant).
- 4. A section that contains a description; (starting on its own page; this includes necessary drawings too)
- 5. A section with at least 1 claim (again, separate page).
As soon as all the above elements are met, the USPTO will give an international filing date to the IA.
1812: The IA must have a request, description, claims, abstract, and necessary drawings (note that this is more than is needed to just get the international filing date).
1817.01: How states are designated on IAs occurring on or after 20040101 (basically, a proper request means all countries are automatically designated):
The IA request constitutes:
- 1. all member states of the PCT are designated;
- 2. A request for every form of patent protection available in each state;
- 3. Remember: For coming to the U.S. the actual inventors must still be indicated as (at least some) of the applicants on the request (this is not necessary in other countries).
1817.02: Indicating a Continuation or CIP in the IA: (when there is an earlier national app):
- The request should indicate that it is seeking benefit from a prior US or prior IA designating the US. (check the ‘Supplemental’ box)
- The specific relationship to the parent app (like is this new app an RCE, or a CIP with new matter) should be specified, and the parent app should be clearly identified (with app number)
- Note: Just because the request properly identifies the parent app, the applicant still has to have a proper ADS that claims benefit of the prior app, or alternatively the IA must identify the prior app in the first sentence(s). (Same as rules in normal US apps, see 37 CFR 1.178(a)(2)).
1819: Getting a Refund when there was an earlier ISA: Some ISA’s refund part of the $$ if there already was a search done on the same subject matter. So if there already was a search on a normal US app (35 U.S.C. 111) then there could be a discount for an IA on the same material.
1820: Sig of Applicant:
Before 20040101: All applicants had to sign, but if one was unavailable or refused the other applicants could file a statement explaining why the other applicant did not sign.
After 20040101: Just one applicant needs to sign.
1823-1825: Description; Claims; Drawings:
- 1. The description should clearly describe the invention such that the OSP could practice it (big surprise); The PCT has 6 sections it wants the description divided into:
- 1. Technical Field
- 2. Background Art
- 3. Disclosure of Invention.
- 4. Brief Description of Drawings
- 5. Best mode for Carrying out Invention (or Mode(s) for carrying out invention)
- 6. Industrial applicability (utility)
- 7. –> Where applicable: Sequence listings (like for DNA sequences)
- Claims: They define the matter for which protection is sought (yay), clear & concise, fully supported in disclosure; PCT likes 2 chunks:
- 1. A statement of the prior art
- 2. The ‘characterizing features’ for which protection is sought in this invention
- 2. Drawings: If necessary the IA should contain drawings. While there is no express provision for photos, they are allowed if they are necessary for understanding the invention. The only way to amend drawings is if the applicant makes the (optional) demand for an IPE (International Preliminary Examination).
And onto 51:
1826: The Abstract:
This should contain a brief (50-150 word) synopsis of the inventi0n, its field, technical problems solved, gist of how the invention solves the problem, principle uses of the invention, main features, & chemical formulas (if any).
1827: Fees: There are filing, transmittal, search fees all payable on the filing date of the IA.
1828: Being able to claim Priority over an Earlier App:
- 1. To claim priority over an earlier national or IA, the claim for priority must be in the IA request, and it must contain: the country where the app was filed, date of filing, and application number (all of these are taken as what was true as of the filing date of the later IA).
- 2. In case the applicant forgets to or puts an invalid priority claim down, the applicant can correct the priority claim either: (Think about it this way, the claim of priority should happen within 12 months of the filing of the later IA, these rules maintain the 12 month time between filing dates, but tack on 4 months for corrections):
- 1. Within 16 months of the filing date of the original app the applicant is claiming priority over; or
- 2. Within 4 months of filing the later IA.
- 3. The applicant has to have a certified copy of the original app that is being prioritized (in the U.S. it might need an English translation if not in English). This needs to be in either within 16 months of the priority date of the earlier app, or before examination begins.
1832: Licenses for Foreign Filing:
- Memory Lane: Remember, that a normal US app has to either 1. have a foreign license to be concurrently filed in a foreign country; or the applicant has to wait 6 months to file in the foreign country (assuming no national security orders are put on the app).
- If the new IA is not disclosing any new matter that was not already in an earlier US app that already had the foreign license, or was already filed > 6 months prior, it is OK to push internationally.
1834: Correspondance: (Mail time again):
- 1. When the Office gets a mailing that does not properly ID the app to which the papers relate, it will contact the applicant/agent to get this corrected.
- 2. If there is just 1 applicant with no agent(s) the mailings go to the applicant at designated addr; otherwise they first go to agents.
- 3. Remember: the 37 CFR 1.10 Express Mail provisions do apply, BUT the 37 CFR 1.8 “certificate” practice does not apply to an IA.
1834.01: Faxing Stuff: It may be allowed but not for:
- 1. Anything that needs to be ‘certified’ (this means: the app itself, certified copies of other apps, drawings, other docs required by statute to be certified).
- 2. While there is no ‘fax certificate’, the normal rules (a fax is considered transmitted on the date of the final page being received at the USPTO, time extends over weekends to next business day).
1836: It is possible to fix obvious errors:
- Obvious does not mean if whole pages are missing from the app (even if it is obvious that the pages are missing, and they were only omitted due to clerical error)
- It does mean, spelling, linguistic, grammatical errors, as long as no underlying meaning of the app is changed.
1840: The ISA:
- Remember, the ISA does 3 main things: 1. It makes an international search for prior art; 2. It makes a report on what it found; 3. For apps on or after 20040101, it makes an opinion about whether or not prior art defeats the claims.
- Using the European Patent Office as the ISA: This is generally allowed when using the USPTO as the RO, but there are 3 big exceptions: Biotech, Business Method, & Telecomms patents should not go to the European office for ISA, they should stay in the US.
1842: The ‘flow’ of the IA process: DEADLINES!!
- 1. Remember, all time periods are measured from the priority date of the IA. This means if the applicant is claiming priority over an earlier national app or IA that earlier date is what everything gets measured against. If there is no claim of priority in the IA, the priority date is just the date of filing the IA itself.
- 2. International Filing Dates: Remember, in order to actually get the priority over an earlier app, the IA that claims priority over that app needs to be filed within 12 months of the earlier app’s filing date.
- Time for establishing the International Search Report (from the ISA): The time limit is either 3 months from the time the ISA receives its copy of the app, or 9 months from the priority date, whichever occurs later.
- Publication: The app will get published promptly after 18 months from the priority date of the app.
- Deadline for Filing a Demand in order to get an (optional) Preliminary Examination (from the IPEA): The demand must be filed before the latter of: 1. 3 months from the date of transmittal to the ISA; or 2. 22 months from the original priority date. Remember, the 30 months from the priority date deadline still applies in moving the app onto the national stage. Therefore, it might mean that as a practical matter the app has to go to IPEA sooner than the above deadlines.
- Deadline for filing a copy, translation, & fees for moving the app onto the National Stage: a. 30 months from the priority date under chapter I; b. The PCT sets the deadline at 30 months, but individual nations could set the limit as longer than 30 months if they want (30 months is a common minimum).
1850: Unity of Invention Before the ISA: (like a restriction requirement when there are multiple independent inventions in one app):
- 1. There must be a ‘unity’ of invention (1 invention per app, or if there are multiple inventions they must be linked to form a ’single general inventive concept’).
- 2. As long as the independent claims avoid prior art and also satisfies unity of invention (by having 1 invention or by having a single inventive concept via ’special technical features’ that are shared by the inventions).
- 3. If there is little or no extra effort involved in searching for multiple inventions, the ISA will not charge an extra fee.
- 4. However, if there is substantial extra effort, the ISA will still perform searches if the applicant pays extra fees. The ISA will invite the applicant to pay the extra search fees on additional inventions. Remember: The ISA is not the final arbiter of unity or patentability, it is just doing prior art searches and giving a non-binding preliminary report. If the applicant does not pay the extra fees, parts of the IA will not be searched.
- 5. Protesting: When the applicant thinks the ISA is wrong, the applicant can file a statement of protest over lack of unity, or of extra fees, and to the extent this convinces the ISA, the fees may be waived.
1853: Amending Claims under PCT 19:
- There is ONE opportunity to amend the claims (and only the claims) after the ISA issues its report. The applicant has 2 months from the time the search report is mailed to amend claims in the IA. If received in time, the IB’s publication will contain the amended claims.
1857.01: Review of 102(e) and 20001129 issues with IAs:
- On or after 20001129:
- If the IA designates the US
- If it was published in English.
- Then: The IA is available as prior art under 102(e) and also, the applicant will be able to get the date of the IA as the 102(e) date when moving the app onto the national stage.
- If not designating US or in English: Then the app is not available under 102(e), however, the published app is available under 102(a) or 102(b) so be careful!
- Before 20001129:
- There is no ability to get the earlier filing date of the IA for 102(e) purposes here.
1859: Withdrawing an IA or claims:
- As long as withdrawal is done within 30 months of the priority date (deadline for moving onto the national stage) the applicant may withdraw: the whole app; a designation of a country; or a priority claim.
- Appointed agents can withdraw, or the applicant can do it.
1860: The IPEA process:
- Step 1: The IPE will read the app, and the opinion of the ISA. If the ISA used is either the USPTO or European Patent Office, the ISA’s opinion will be considered a valid initial opinion, and the USPTO will generally not write up another initial opinion in those cases (only where there is no other initial opinion).
- Step 2: If the applicant is protesting a negative opinion present in the ISA’s opinion, then the applicant can protest this finding and get a further written opinion if the USPTO thinks the protest is persuasive.
- The written opinion has to state grounds for each of its conclusions (just like in any finding on the merits for the USPTO)
- The applicant has the opportunity to file a response with amendments to the app, usually there is a 2 month time limit from the time of the opinion to get in the reply.
1864: The Demand for IPE, and the ability to amend:
The applicant has the option to file a demand for IPE, and if that occurs the applicant may also amend the app. This amendment will allow the applicant to address problems with novelty/obviousness/or industrial applicability to get a positive initial report (which is important in some offices for getting a patent).
- As of 20040101, filing a demand means the applicant is electing all nations that are members of the PCT.
- The demand should be sent via mail straight to the IPEA (not to the IB).
- Agents (like attys of record or patent agents) that are allowed to practice in front of the home-office are also allowed to practice in front of that office in its role as IPEA (so if I’m registered for the USPTO, I can represent applicants on an IPEA too).
The IPE Exam:
- Unity Issues: The IPE only concerns itself with inventions that were previously searched for by the ISA. This means that if the ISA found there to be a lack of Unity (or multiple inventions that would raise a restriction requirement in a normal app) then only the inventions that the ISA actually searched will be considered by the IPEA.
- Remember: The ISA may invite the applicant to pay more fees for additional searches, if the applicant does so then the multiple inventions will still be in the IPE since they were searched.
- The exact same process will apply before the IPEA if there is no unity, the applicant will have the choice to either restrict claims to one invention, or to pay extra fees for additional inventions (1875.02)
- Further reports done by the IPEA:
- Remember: On or After 20040101 all ISA searches come with an opinion of their own. Normally, the IPE will not have a second opinion (the first ISA opinion is considered by the IPEA).
- However: If the applicant files a response to the ISA report that persuasively argues against negative findings (like: lack of novelty, obviousness, lack of applicability to industry) then the IPEA will draft a second report reflecting its findings based on the new arguments
1878: How IPEA Considers novelty/non-obviousness/industry applicability:
- 1. Novelty: The relevant prior art date is either the IA filing date, or if priority is properly claimed on a prior app, the priority date (remember, that cannot be > 12 months before the IA filing date).
- 2. Inventive Step (obviousness): If the OSP would not have found the invention obvious as of the relevant priority/IA date then the invention is seen as non-obvious.
- 3. Industrial Applicability (utility): If the invention can be made or used in any kind of industry it is considered applicable.
1878.02: Amending & Replying to an IPE opinion:
- The amendments are all due within the deadline set forth after the examination report is made. No extensions are allowed.
- How do make amendments (different than for normal apps): Instead of overstrikes/underlines, the amendments should come on separate replacement sheets that have explanations as to how the replacement sheets differ from the original.
- During the time period when reply is allowed, the applicant may request a phone or in-person interview. All the interviews will become part of the official record.
1879: Prepping the IPEA’s report (time limits):
- REMEMBER: NO MATTER WHAT THE NATIONAL STAGE FEES MUST BE PAID WITHIN 30 MONTHS OF THE PRIORITY DATE OF THE IA! NO EXTENSIONS, NO EXCUSES!. (this is the final step, getting onto the national stage, otherwise the IA is not that useful)
- The report’s deadline is 1 of:
- 28 months from the priority date (2 months left over to enter national stage); or
- 6 months from the time that the IPEA begins; or
- 6 months from the receipt of the IPEA of the translation of the app or priority app.
- Remember: The IPEA has a time limit of beginning 22 months after the priority date, so 22 months to start + 6 months to conduct the IPE == 28 months total time.
What is a National Stage App?
Just a normal 35 U.S.C. 111(a) (NPA) or 111(b) (PA –> technically possible but rare) app that is filed after the applicant has met the conditions set forth in 35 U.S.C. 371 (37 CFR 1.9).
What is the whole PCT process really buying the applicant?
- 1. Time: remember, the PCT gives 30 months from the priority date for getting the filing fee submitted on the national stage. Under a U.S. app, filings in foreign countries would normally: (a) only get foreign priority not full benefits given by the PCT; (b) only have a 12 month window from the earliest foreign filing date.
- 2. Knowledge: Remember, the ISA and possibly IPE give you good information on the prior art and on the patentability of the invention. This can be helpful in deciding whether to continue, or in how to amend the app.
- Example 1: Japanese applicant files normal app in Japan. 12 months later (may time for priority in PCT) he files PCT app in Japanese RO. Now, the Japanese applicant can enter the U.S. stage within 30 months of the priority date (and gets 102(e) benefits if the patent is published in English)… more time! Alternatively, the Japanese applicant could also go ahead and file a normal 111(a) app in the U.S. (in English) that claims the benefit of the PCT app at any time during the 30 month pendency of the PCT app.
- Example 2: Say the applicant is American, and files a normal app in the USPTO. 12 months later, he files an IA using the USPTO as RO. The U.S. applicant can now either enter the Japanese stage by making sure the fee is paid within 30 months of the priority date, or just file a normal Japanese app in Japan that claims prioirity over the IA during the pendency of the IA. (Reciprocal rules!)
Remember: To enter the National Stage, the basic national stage fee MUST be paid by 30 months after the priority date! (37 CFR 1.492) It can be paid in the usual ways (charge account with USPTO, CC, check, etc)
- The applicant can come into the national stage earlier than 30 months out too (35 U.S.C. 371(f)) as long as all the requirements are met (35 U.S.C. 371(c)):
- The requirements to actually get on the national stage are:
- 1. The National Fee (the $, and the one thing that has to be in before the 30 month priority deadline)
- 2. A copy of the app (this includes amendments that may have been made) It is provided by the IB; and if needed translations to English are also required. (also has to be in by 30 months)
- 3. If any amendments were made to claims under PCT 19 (that 2 months after the ISA report) then those amendments should be forwarded too.
- 4. Oaths/decls of the inventor(s) or other parties who would be valid under 35 U.S.C. 111, and 115.
- 5. If the ISA/IPEs are not in English, translations of those as well.
- 6. The normal filing/search/exam/app size fees that would be paid for a normal app.
- If the National Fee & basic app are in by the 30 month (non-extendable) deadline, but the oath/decl, translation, other fees are not on time, they can be put in later under the following rules:
- 2 month basic deadline
- Extendable by 5 months (37 CFR 1.136(a))
- IF: the papers that are filed are on time but deficient then abandonment results, if it was unintentional then the 37 CFR 1.137 revival process might work to bring the app back.
When is the effective filing date for an IA that enters the National Stage?
Under 35 U.S.C. 363 and PCT 11: It is the proper date of the IA itself. If the IA is seeking earlier priority, that priority must be valid to get the earlier priority date. Examples:
- Foreign Priority: The U.S. app has to claim foreign priority over the same app claimed in the IA to get the priority. If priority is not claimed at the International Stage, it is not available at the National Stage. Remember the earlier rules on claiming a prior filing: The applicant needs to have a certified copy to the IB by 16 months of the priority date (or 4 months after the filing date).
- If the IB sent a certified copy of the earlier app to the USPTO the applicant is OK, otherwise the applicant will have to provide a certified copy to the USPTO.
- A prior U.S. PA: The National Stage app must comply with 37 CFR 1.78(a)(4):
- Review: At least 1 inventor in common & at least one claim in the new app must pertain to the named inventor’s prior invention!
- Time: Remember, a PA is only good for 12 months, this does not change that fact of pendency, the National Stage can only benefit if filed within 12 months.
- A prior US NPA: The National Stage App must comply with 37 CFR 1.78(a)(3):
- Review: At least 1 inventor in common & at least one claim in the new app must pertain to the named inventor’s prior invention!
- Remember: the earlier app must be copending!
What are the big differences between an IA and a normal national App:
- Remember: While the applicant may choose to file a 35 U.S.C. 111(a) app that claims benefit on the IA instead of moving onto the national stage, the rules on unity are different between the 2 apps.
- The Oath for international apps (under 37 CFR 1.497) must identify and have all inventors sign (if they are available to so). This puts it in accord with 37 CFR 1.63 oath/decl which are the normal oaths executed on US apps.
- However: non-inventors signing onto the national-stage Oath/decl may do so as long as they state their relationship with the inventors (normally under 1.63 non-inventors like assignees do not sign).
- FILING DATE DIFFERENCES for 102(e):
- To get a 35 U.S.C. 111(a) the (basic) filing date is: 1. description; 2. at least 1 claim; 3. necessary drawings. (see claiming priority/benefit below)
- For a 371 filing date: It is instead the filing date of the IA! (IA had to be published in English!)
- Foreign Priority REquirements (35 U.S.C. 119(a)-(d)):
- For 35 U.S.C. 111(a): There needs to be a claim of priority (in the Oath/decl!), and also a certified copy of the foreign app (plus translations)
- 35 U.S.C. 371: Claim by applicant still needed, only now there only needs to be a copy of the foreign app that was previously received by WIPO. (Remember, to get foreign priority the original IA must have claimed foreign priority as well)
- Unity of Invention:
- 35 U.S.C. 111(a): Remember: NORMAL RESTRICTION PRACTICE (37 CFR 1.141-146)
- 35 U.S.C. 371: Unity Practice (37 CFR 1.475)
- Different Filing Fees:
- 35 U.S.C. 111(a): 37 CFR 1.16
- 35 U.S.C. 371: 37 CFR 1.492
- A reference to the copending IA in the Declaration (first sentences) or ADS:
- 35 U.S.C. 111(a): Attach the IA, give U.S. application numbers for copending U.S. apps, etc.
- 35 U.S.C. 371: Same as 111(a)
- Copendency with the IA:
- 35 U.S.C. 111(a): If filed during pendency of the IA, the applicant must show proof of the IA and that he is the owner of the IA, etc.
- 35 U.S.C. 371: Moot point, all the requirements for getting onto the national stage meet the proof requirements.
What is the ‘Unity Practice’ regulation (37 CFR 1.475):
Remember: An IA brought onto the National STage via 35 U.S.C. 371 uses a different form of unity than a normal 35 U.S.C. 111(a) app. In fact, even if a 35 U.S.C. 111(a) app is filed that claims the benefit of an IA (like during the PCT process if the applicant files in the U.S. normally) the 35 U.S.C. 111(a) app always uses normal restriction practice:
37 CFR 1.475:
Remember, unity means there is either only one invention, or that multiple inventions are part of the general inventive concept (meaning they are linked together via ’special technical features’).
If the invention meets 1 (and only one) of the following criteria it is considered in unity:
- product + process patent where the process is specially adapted to make the product (although the product might be made in other ways too); or
- product + use patent where a product and the method for using the product are described; or
- product + process of use + process of manufacture for describing the product/how to make/how to use; or
- process + apparatus that is specifically designed to carry out the process; or
- a product + process app where there is also a specific apparatus used to carry out the claimed process.
If there are issues with unity, the examiner can require an election of an invention and make a restriction. Remember, an IA moved onto the national stage can have divisionals and other continuations just like a normal app.