The following section describes some differences between a U.S. national application filed under 35 U.S.C. 111(a), including those claiming benefit of a PCT application under 35 U.S.C. 120 (a continuation, division, or a continuation-in-part of a PCT application), and a U.S. national stage application (submitted under 35 U.S.C. 371).
| National Applications (filed under 35 U.S.C. 111(a) ) | National Stage Applications (submitted under 35 U.S.C. 371) | |
|---|---|---|
| Filing Date | see 37 CFR 1.53(b) | International filing date of PCT application |
| 35 U.S.C. 119(a) - (d) Priority Requirement | Claim for priority in accordance with 37 CFR 1.55(d)(1) Certified copy provided by applicant in accordance with 37 CFR 1.55(f)(1), unless the requirements of 37 CFR 1.55(h) or (i) have been met | Claim for priority in accordance with 37 CFR 1.55(d)(2) Copy of certified priority document provided by the International Bureau or in accordance with 37 CFR 1.55(f)(2). |
| Unity of Invention | U.S. restriction practice under 37 CFR 1.141-1.146 | Unity of invention practice under 37 CFR 1.499 |
| Filing Fees | 37 CFR 1.16 | 37 CFR 1.492 |
The differences between a national application filed under 35 U.S.C. 111(a) and a national application submitted under 35 U.S.C. 371 are often subtle, but the differences are important.
I. FILING DATE
The filing date of a 35 U.S.C. 111(a) application is, except as provided in 35 U.S.C. 111(c), the date when a specification is received in the USPTO. See 37 CFR 1.53(b) and 37 CFR 1.57(a).
The filing date of a PCT international application is the date applicant satisfies Article 11 requirements, i.e., includes a description, a claim, names at least one applicant who is a resident or national of a PCT Contracting State, filed in the prescribed language, and designates at least one Contracting State. See MPEP § 1810. By virtue of 35 U.S.C. 363, the U.S. filing date of an international application that designates the United States is, for most legal purposes, the international filing date. See MPEP § 1893.03(b).
II. 35 U.S.C. 119(a)-(d) AND 365(b) PRIORITY REQUIREMENTS
In a U.S. national application filed under 35 U.S.C. 111(a), the claim for priority must be filed 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). The certified copy of the foreign priority application must be provided to the Office by applicant within the time period set forth in 37 CFR 1.55(f), which is the later of four months from the actual filing date of the application or sixteen months from the prior foreign application, unless the requirements of 37 CFR 1.55(h) or 37 CFR 1.55(i) have been met. See MPEP § 1895.01.
In a U.S. national stage application submission under 35 U.S.C. 371, where applicant filed an international application claiming priority to an earlier filed national application, the claim for priority must be made and the certified copy of the priority application must be furnished during the international stage within the time limit set forth in the PCT and Regulations under the PCT. The International Bureau sends a copy of the certified priority document to each designated office that has requested to receive such documents. Upon receipt of applicant’s submission to enter the U.S. national stage under 35 U.S.C. 371, the USPTO will request from the International Bureau a copy of the certified priority document submitted in the international stage. Upon receipt of the priority document, the USPTO will place the document in the image file wrapper of the national stage application. Such a copy from the International Bureau is acceptable in a U.S. national stage application to establish that applicant has filed a certified copy of the priority document in compliance with 37 CFR 1.55(f)(2). For procedures when the certified priority document was not provided during the international stage, see MPEP § 1893.03(c).
III. UNITY OF INVENTION
U.S. national applications filed under 35 U.S.C. 111(a) are subject to restriction practice in accordance with 37 CFR 1.141-1.146. See MPEP § 803. U.S. national stage applications are subject to unity of invention practice in accordance with 37 CFR 1.475 and 1.499.
IV. FILING FEES
U.S. national applications filed under 35 U.S.C. 111(a) are subject to the national application filing fees set forth at 37 CFR 1.16. Submissions to enter the U.S. national stage under 35 U.S.C. 371 are subject to the national stage fees prescribed at 37 CFR 1.492.