Nationalizing PCT Applications in the US
Which is Better, 371 Route or Bypass CON Route?
371 Nationalization v. Bypass Continuation
Let’s get ready to…
…Training- Review of Some of the Basics
PCT Applications- Nationalization Routes
• PCT Applications that designate the US are
considered US applications, so...
• Can Nationalize under 35 USC 371- traditional nationalization- a
371 nationalization is technically the same application as the PCT
application
• Can file a “Bypass CON”- a continuation application that claims
priority under 35 USC 120 to the PCT application as a
continuation application of the PCT application
• 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....“ --See, MPEP 1895
PCT Applications- 371 Nationalization Route
International Phase Transmittal National Phase
PCT Application US National Stage
-Same Int'l App. No.
-Assigned New US App. No. (for tracking)
-Claims & Spec. amendments are based on
those during international phase.
-Generally, do not need a new IDS for Refs.
cited in Search Report/Written Opinion (as long
as transmitted to USPTO).
-Generally, do not need to resubmit certified
copies of foreign priority documents as long as
transmitted to the USPTO (but may need to
submit verified translation).
Treated as if the Same Application
PCT Applications- Bypass Continuation Route
International Phase
PCT Application
“This application is a continuation of
CON. International Application No. PCT/...
Continuation
Application Treated as a New Application
-New US App. No.
-Claims & Spec. amendments are based on what is filed- amendments
during international phase do not count.
-Need a new IDS for Refs. cited in Search Report/Written Opinion.
-Need to resubmit certified copies of foreign priority documents and may
need to submit verified translation.
The Match- Let’ s Get Ready to…. Compare
…Filing Requirements
Round
1
PCT Applications- Filing Requirements
• 371 Nationalization • Bypass CON
• Transmittal (PTO-1390) • Application- specification,
claims, abstract & drawings
• Filing Fees- Filing, Search, • Need priority claim
and Examination fees, etc.
• Filing Fees- not required
• May also need..
• Preliminary Amendment
- to remove multiple
dependent claims
371 Transmittal
…Practical Issues
Round
2
PCT Applications- Practical Issues Filing
• 371 Nationalization • Bypass CON
• Sometimes, not sure which claims
• Standard practice
are pending due to amendments
during the international phase
• Allows addition of new
• Have to deal with multiple matter (CIP) –see, MPEP
dependencies 1895
• Not familiar with transmittal
• Do not need to submit copy of the
application and other paper work-
just makes USPTO file messy
• No new matter allowed (i.e., no
CIP’s)
…Foreign Certified Copies
Round
3
Certified Foreign Priority Documents
• Easily missed- need to check PAIR
– If Examiner comes across intervening reference, they may
request foreign priority documents (to show entitled to
earlier date)
– Otherwise, no notice!
• To Perfect a Foreign Priority Claim
• USPTO Needs a Certified Copy
1. Paper Certified Copy, OR
2. Patent Document Exchange (PDX) Request- Electronic
Transfer to USPTO (automatic now)- but some countries
not yet participating.
• Verified English Translation- for non-English foreign priority
documents
PCT Applications- Foreign Certified Copies
• 371 Nationalization • Bypass CON
• Certified copies of foreign • You will need to submit a
priority applications are not certified copy of foreign
required so long as the priority application
International Bureau • BUT now have Patent
transmits the copies to the Document Exchange
USPTO. (PDX) program with a
majority of countries
• USPTO will now
• If priority application is not in automatically request
English, you will still need to • If priority application is not in
transmit a verified English, you will still need to
translation. transmit a verified
translation.
…After Filing Formalities
Round
4
PCT Applications- After Filing Formalities
• 371 Nationalization • Bypass CON
• Filing Receipt takes a long • Filing Receipt- processed
time to receive relatively fast
• Signed Declaration- will not • Signed Declaration- filing
receive a filing date until a date is not based on when
signed declaration is filed declaration is filed
(hurts patent term as well)
• Filing Fees- can file later
PCT Applications- After Filing Formalities
• 371 Nationalization • Bypass CON
• Publication • Publication
• Claim amendments made at the • As long as the amended
time of nationalization via a claims are incorporated into
Preliminary Amendment might the body of the application
be published (or not) at the (i.e., not via a Preliminary
discretion of the USPTO. Amendment), they will be
published.
• Normally, the application is
published without the amended
-Any new matter questions-
claims from the Preliminary you can submit remarks.
Amendment. • Eliminates the problem with
damages calculations.
• This is a BIG problem because
you might time from your
damages calculation for
provisional rights.
…Information Disclosure Statements
Round
5
PCT Applications- IDS Comparison
• 371 Nationalization • Bypass CON
• Do not need to submit IDS for
references cited during • Need to submit an IDS
international phase (e.g., in the • “When filing a continuing application that claims
search report) so long as benefit under 35 U.S.C. 120 to an international
USPTO Form PCT/DO/EO/903 application that designated the U.S. (see MPEP
§ 1895), it will be necessary for the applicant to
indicates search results submit an information disclosure statement
transmitted to national file. complying with 37 CFR 1.97 and 1.98 in the
continuing application listing the documents
• Still probably good practice cited in the international search report and/or the
to submit IDS because international preliminary examination report of
the international application if applicant wishes
references will not be listed to ensure that the information be considered by
on the face of the patent the examiner in the continuing application.<“
unless cited on IDS. --see, --MPEP 609.02
MPEP 609.03
• Will need to submit IDS for new
• Will need to submit IDS for new references
references
…Restriction Practice
Round
6
PCT Applications- Restriction
• 371 Nationalization • Bypass CON
• Relies on PCT unity of • Uses US standard restriction
invention standard practice (independent &
distinct)
• Usually results in less
independent claims • On average, more
independent claims- more
• This can cause problems permissive
because US examiners may
not be familiar with the • US Examiners are familiar
standard and incorrectly use with the standard
US standard restriction
practice
…Prosecution & Fees
Round
7
PCT Applications- Prosecution & Fees
• 371 Nationalization • Bypass CON
• Totally clean search
report/opinion (i.e., all claims are • Bypass route is the only way to
patentable)- very unlikely use traditional accelerated
examination (371 will not work)
• May receive marginal filing fee --See, USPTO’s Accelerated
discount if have clean Search Examination FAQs
Report/Written Opinion by US as ISA
• $320 Savings US/ISA • Clean written opinion- still pay the
• $650 Savings other normal ISA’s same fees (Rare)
• New- May use PCT-PPH to • PCT-PPH available for bypass
speed up examination when applications as well
originating application is filed in
certain countries (JPO, EPO, etc.)
• No fee now required
…Patent Term Adjustment
Round
8
PCT Applications- Patent Term Adjustment
• 371 Nationalization • Bypass CON
• Will lose patent term if: • Will only lose patent term if
file signed declaration more
• Do not request expedited than 3 months after mail
examination (check the right date of missing parts.
box on transmittal).
• File signed declaration after
nationalization date.
Quick Patent Term Adjustment Refresher
• 35 USC §154(b)(1) Periods
• (A) Guarantee of prompt USPTO responses- 14 months for
USPTO to send an Office Action or Notice of Allowance (plus
various 4 month periods)- Examination Delays
• (B) Guarantee of no more than 3-year application pendency-
USPTO fails to issue patent 3 years after actual filing date
• No Double Counting When Periods Overlap
• § 154(b)(2)(A) "[t]o the extent that periods of delay attributable to
grounds specified in paragraph (1) overlap, the period of any
adjustment granted under this subsection shall not exceed the
actual number of days the issuance of the patent was delayed."
Wyeth v. Kappos (Fed. Cir. 2009)
Issue: When does the overlap occur?
USPTO
37 CFR § 1.703(f)- B guarantee period starts at the time of
the filing of the application, not 3 years after the filing
date.
You only get the greater of the A or B periods
USPTO – 3 Years PTA
Overlap Overlap
Here B Delay Here
A Delay A Delay
Filing 14 mo. Office 3 year Issue 4 mos. from Issue
date date Action date fee issue fee date
issued paid payment,
patent
should issue
Wyeth v. Kappos (Fed. Cir. 2009)
Federal Circuit
A & B overlap only occurs after 3 years from the filing date.
(A+B Formula)
1 Year USPTO – 3 Years PTA
Overlap
B Delay Here
A Delay A Delay
Filing 14 mo. 26 mo. 3 year Issue 4 mos. from 6
date date Office date fee issue fee years
Action paid payment, issue
issued patent date
should issue
Wyeth v. Kappos (Fed. Cir. 2009)
• USPTO Response
• USPTO will be processing recalculation requests under
an interim procedure that is available to a patentee
whose patent issues prior to March 2, 2010, and who
requests it no later than 180 days after the issue date.
• This procedure is available only for alleged errors in
calculation that are specifically identified in Wyeth.
• Information on requesting a recalculation of patent term
is on the USPTO Web site at
http://www.uspto.gov/patents/announce/pta_wyeth.pdf.
Wyeth v. Kappos (Fed. Cir. 2009)
• USPTO Wyeth PTA Form PTO/SB/131
Novartis Challenges Interim Procedure
• Novartis
• "[t]hese interim procedures included an
expedited, informal procedure for seeking
recalculation of PTA solely on the basis of
Wyeth, but extended that remedy only to
patents issued on or after September 2, 2009."
… it would “deny as untimely any request for
recalculation of patent term adjustment
indicated on a patent that is not filed within
180 days of the day the patent was granted."
Japan Tobacco Petition
USPTO Miscalculating Period B for PCT 371 National Stage Applications
Originally, USPTO considered the B Period filing date= when an international
applications fulfilled the requirements of 35 U.S.C. § 371 (e.g., filed signed
Oath/Dec.).
BUT, 37 C.F.R. § 1.702(b) states that "the term of an original patent shall be
adjusted if the issuance of the patent was delayed due to the failure of the
Office to issue a patent within three years after the date on which the
application was filed under 35 U.S.C. 111(a) or the national stage
commenced under 35 U.S.C. 371(b) or (f) in an international application.”
Section 371(b) states that subject to § 371(f), "the national stage shall
commence with the expiration of the applicable time limit under
article 22 (1) or (2), or under article 39 (1)(a) of the [PCT].“ = 30
Month Chapter II Deadline
So the B-Period filing date for 371 national stages should be the 30-Month
Chapter II deadline (if filed under 371(b)-- more later)
Japan Tobacco Petition
USPTO
USPTO relents- B-delay should be calculated based on the date
on which the national stage commenced, not the date on
which the requirements of § 371(c) were fulfilled.
3-Year B-Period
Chap II File Signed
Deadline Declaration-
(30 Months) satisfy 371(c)
Japan Tobacco Petition
PCT Patent Term Landmines
B-Period Delay Landmine- Early 371 Nationalization
If Nationalize under 371 before 30-month chapter II deadline and
satisfy 371(c) requirements (e.g., pay fees, signed Declaration,
etc.), you still need to expressly request early processing
under 371(f) to get the nationalization date for B-Delay filing date.
If not, B-Delay filing date will be based on the Chapter II (30-
month) deadline & not the earlier nationalization date.
Contrast regular utility or bypass CON- B-Period filing
date is the actual filing date of the application.
Japan Tobacco Petition
B-Delay Period Landmine
Nationalize PCT Application before the Chapter II Deadline
Satisfy 371(c)- file signed declaration, etc.
Expressly request early processing (check the
box on form)
3-Year B-Period
B-Delay filing date starts
before Chapter II Deadline
Nationalize Chap II
Deadline
(30 Months)
Japan Tobacco Petition
B-Delay Period Landmine
Nationalize PCT Application before the Chapter II
Deadline BUT
Fail to satisfy 371(c) OR
Fail to expressly request early examination
3-Year B-Period
B-Delay filing date starts
on Chapter II Deadline
Nationalize Chap II File Signed
Deadline Declaration-
(30 Months) satisfy 371(c)
Japan Tobacco Petition
B-Delay Period Landmine- COMPARE
Instead file via the bypass CON route BUT
Fail to file signed declaration OR
Fail to expressly request early examination
B-Delay filing date starts
3-Year B-Period before Chapter II Deadline
Bypass CON Chap II File Signed
Filing Date Deadline Declaration
(30 Months)
PCT- Patent Term Adjustment
PCT Patent Term A-Delay Landmines
A-Delay Date is still based on fulfillment of national requirements
under 371(c).
For example, if you do not file a signed declaration when the
PCT application is nationalized, you lose A-term until you
file the signed declaration.
Contrast to a regular utility or bypass CON- where you do not
lose A-term so long as you file the signed declaration
within 3-months of Notice to File Missing Parts
PCT- Patent Term Adjustment
A-Delay Period Landmine
Nationalize PCT application under 371
Fail to file signed declaration with
nationalization
A-Period
A-Delay- lose term- until
Lose Term file signed Declaration
Nationalize Chap II File Signed
Deadline Declaration
(30 Months)
PCT- Patent Term Adjustment
A-Delay Period Landmine- COMPARE
Instead file via the bypass CON route
Fail to file signed declaration when application filed
File signed declaration 1-month after missing parts deadline
A-Period 2 Month Deadline DO NOT LOSE ANY
For Missing Parts A-TERM!
Bypass CON Chap II File Signed
Filing Date Deadline Declaration w/ 1-Month
(30 Months) EOT + surcharge
…And the Winner is…
PCT- 371 Nationalization or Bypass CON?
What is the best way to nationalize a PCT ?
Answer: Generally, bypass CON!!!
Patent Term
PDX
Bypass CON
Simplicity
371
Nationalization US Restriction...
Want to know more?
Chuck Schmal
Patent Attorney
Woodard, Emhardt, Moriarty, McNett & Henry LLP
Chase Tower
111 Monument Circle, Suite 3700
Indianapolis, IN 46204
317.634.3456
cps@uspatent.com
www.uspatent.com