1805 Where To File an International Application [R-01.2024]

See MPEP § 1806 as to who can file an international application.

Only if at least one of the applicants is a resident or national of the United States of America may an international application be filed in the United States Receiving Office. See PCT Article 9(1) and (3), PCT Rules 19.1 and 19.2, 35 U.S.C. 361(a) and 37 CFR 1.412(a) and 1.421. The concepts of residence and nationality are defined in PCT Rule 18.1.

International applications may be filed electronically through the USPTO patent electronic filing system. International applications and related papers may also be deposited with the United States Receiving Office by addressing the papers to “Mail Stop PCT” and hand-delivering them to the Office. See MPEP § 501, subsection III for information regarding hand-delivery of papers. The mailing address for delivery by the U.S. Postal Service is: Mail Stop PCT, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450. It should be noted that the Priority Mail Express® provisions of 37 CFR 1.10 apply to the filing of all applications and papers filed in the U.S. Patent and Trademark Office, including PCT international applications and related papers and fees. It should be further noted, however, that PCT international applications and papers relating to international applications are specifically excluded from the Certificate of Mailing or Transmission procedures under 37 CFR 1.8. See MPEP § 1834, subsection III. If 37 CFR 1.8 is improperly used, the date to be accorded the paper will be the date of actual receipt in the Office unless the receipt date falls on a Saturday, Sunday, or federal holiday in which case the date of receipt will be the next succeeding day which is not a Saturday, Sunday, or federal holiday (37 CFR 1.6).

Irrespective of the Certification practice under 37 CFR 1.8(a), facsimile transmission (without the benefit of the certificate under 37 CFR 1.8(a)) may be used to submit certain papers in international applications. However, facsimile transmission may not be used for the filing of an international application, the filing of color drawings under 37 CFR 1.437, or the filing of a copy of the international application and the basic national fee to enter the U.S. national stage under 35 U.S.C. 371. See 37 CFR 1.6(d)(3) and (4), 1.8(a)(2)(i)(D), and 1.8(a)(2)(i)(F). The Demand for international preliminary examination may be filed by facsimile transmission. See MPEP § 1834.01.

The United States Receiving Office and PCT Help Desk are available to offer guidance on PCT requirements and procedures. See MPEP § 1730 for information on contacting the staff and other available means for obtaining information.

WARNING - although the United States patent law at 35 U.S.C. 21(a) authorizes the Director to prescribe by rule that any paper or fee required to be filed in the Patent and Trademark Office will be considered filed in the Office on the date on which it was deposited with the United States Postal Service, PCT Rule 20.1(a) provides for marking the “date of actual receipt on the request.” Although the Priority Mail Express® provisions under 37 CFR 1.10 have not been contested to date regarding PCT applications, applicants should be aware of a possible different interpretation by foreign authorities.

PCT Rule 19.4 provides for transmittal of an international application to the International Bureau as Receiving Office in certain instances. For example, when the international application is filed with the United States Receiving Office and the language in which the international application is filed is not accepted by the United States Receiving Office, or if the applicant does not have the requisite residence or nationality, the application may be forwarded to the International Bureau for processing in its capacity as a Receiving Office. See 37 CFR 1.412(c)(6). The Receiving Office of the International Bureau will consider the international application to be received as of the date accorded by the United States Receiving Office. This practice will avoid the loss of a filing date in those instances where the United States Receiving Office is not competent to act, but where the international application indicates an applicant to be a national or resident of a PCT Contracting state or is in a language accepted under PCT Rule 12.1(a) by the International Bureau as a Receiving Office. Where questions arise regarding residence or nationality, i.e., the U.S. is not clearly competent, the application will be forwarded to the International Bureau as Receiving Office. Note, where no residence or nationality is indicated, the U.S. is not competent, and the application will be forwarded to the International Bureau as Receiving Office so long as the necessary fee is paid. The fee is an amount equal to the transmittal fee.

If all of the applicants are indicated to be residents and nationals of non-PCT Contracting States, PCT Rule 19.4 does not apply, and the application is denied an international filing date.

Any applicant who is a resident or national of a PCT Contracting State may also file their application directly with the International Bureau as receiving Office. An applicant may wish to consider filing directly with the International Bureau as receiving Office instead of the United States Receiving Office in the situation where applicant is filing their international application after the expiration of the 12 month priority period but within two months of the expiration of the priority period, and where applicant desires to request restoration of the right of priority under the in spite of due care standard. See MPEP § 1828.01. An applicant may also request that an application be forwarded to the International Bureau for processing in its capacity as receiving Office in accordance with PCT Rule 19.4(a)(iii) in situations where the international application was filed with the United States Receiving Office after the expiration of the 12 month priority period but within two months of the expiration of the priority period, and where applicant desires to request restoration of the right of priority under the in spite of due care standard. However, any transfer request received after substantial processing of the international application by the United States Receiving Office has occurred may be declined.

An international application filed with, or forwarded to, the International Bureau must have a foreign filing license unless: (1) the invention was not made in the United States; or (2) a U.S. national application on the invention was filed at least six months prior to the filing of the international application, the U.S. national application is not subject to a secrecy order under 37 CFR 5.2, and the international application does not contain modifications, amendments, or supplements changing the general nature of the invention in a manner that would require any corresponding United States application to be or have been available for inspection under 35 U.S.C. 181. See 37 CFR 5.11 and 5.15.

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