1810 Filing Date Requirements [R-07.2022]

PCT Article 11

Filing Date and Effects of the International Application

(1) The receiving Office shall accord as the international filing date the date of receipt of the international application, provided that that Office has found that, at the time of receipt:
- (i) the applicant does not obviously lack, for reasons of residence or nationality, the right to file an international application with the receiving Office,
- (ii) the international application is in the prescribed language,
- (iii) the international application contains at least the following elements:
  - (a) an indication that it is intended as an international application,
  - (b) the designation of at least one Contracting State,
  - (c) the name of the applicant, as prescribed,
  - (d) a part which on the face of it appears to be a description
  - (e) a part which on the face of it appears to be a claim or claims.

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35 U.S.C. 363 International application designating the United States: Effect.

[Editor Note: Applicable to any patent application subject to the first inventor to file provisions of the America Invents Act (AIA). See 35 U.S.C. 100 (note).]

An 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.

35 U.S.C. 363 (pre-AIA) International application designating the United States: Effect.

[Editor Note: Applicable to applications not subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 363 immediately above for the law otherwise applicable.]

An 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 except as otherwise provided in section 102(e).

37 CFR 1.431 International application requirements.

[Editor Note: See pre-AIA 37 CFR 1.431 in Appendix R for para. (b)(3)(iii) applicable to applications filed before September 16, 2012]

(a) An international application shall contain, as specified in the Treaty and the Regulations, a Request, a description, one or more claims, an abstract, and one or more drawings (where required). ( PCT Art. 3(2) and Section 207 of the Administrative Instructions.)
(b) An international filing date will be accorded by the United States Receiving Office, at the time of receipt of the international application, provided that:
- (1) At least one applicant (§ 1.421) is a United States resident or national and the papers filed at the time of receipt of the international application so indicate (35 U.S.C. 361(a), PCT Art. 11(1)(i)).
- (2) The international application is in the English language (35 U.S.C. 361(c), PCT Art. 11(1)(ii)).
- (3) The international application contains at least the following elements (PCT Art. 11(1)(iii)):
  - (i) An indication that it is intended as an international application (PCT Rule 4.2);
  - (ii) The designation of at least one Contracting State of the International Patent Cooperation Union (§ 1.432);
  - (iii) The name of the applicant, as prescribed (note §§ 1.421, 1.422, and 1.424);
  - (iv) A part which on the face of it appears to be a description; and
  - (v) A part which on the face of it appears to be a claim.
(c) Payment of the international filing fee (PCT Rule 15.2) and the transmittal and search fees (§ 1.445) may be made in full at the time the international application papers required by paragraph (b) of this section are deposited or within one month thereafter. The international filing, transmittal, and search fee payable is the international filing, transmittal, and search fee in effect on the receipt date of the international application. If the international filing, transmittal and search fees are not paid within one month from the date of receipt of the international application and prior to the sending of a notice of deficiency, which imposes a late payment fee (§ 1.445(a)(6)), the applicant will be notified and given a one month non-extendable time limit within which to pay the deficient fees plus the late payment fee.
(d) If the payment needed to cover the transmittal fee, the international filing fee, the search fee, and the late payment fee pursuant to paragraph (c) of this section is not timely made in accordance with PCT Rule 16bis.1(e), the Receiving Office will declare the international application withdrawn under PCT Article 14(3)(a).

THE “INTERNATIONAL FILING DATE”

An international filing date is accorded to the earliest date on which the requirements under PCT Article 11(1) were satisfied. If the requirements under PCT Article 11(1) are not satisfied as of the date of initial receipt of the international application papers, the receiving Office will invite applicant to correct the deficiency within a set time limit. See PCT Article 11(2) and PCT Rule 20.3. In such case, the international filing date will be the date on which a timely filed correction is received by the receiving Office. If the defect under PCT Article 11(1) is that the purported international application fails to contain a portion which on its face appears to be a description or claims, and if the application, on its initial receipt date, contained a priority claim and a proper incorporation by reference statement, the initial receipt date may be retained as the international filing date if the submitted correction was completely contained in the earlier application. See PCT Rules 4.18 and 20.6. If the defect under PCT Article 11(1) is not timely corrected, the receiving Office will promptly notify the applicant that the application is not and will not be treated as an international application. See PCT Rule 20.4. Where all the sheets pertaining to the same international application are not received on the same day by the receiving Office, in most instances, the date of receipt of the application will be amended to reflect the date on which the last missing sheets were received. As an amended date of receipt may cause the priority claim to be forfeited, applicants should assure that all sheets of the application are deposited with the receiving Office on the same day. If the application, on its initial receipt date, contained a priority claim and a proper incorporation by reference statement, the initial receipt date may be retained as the international filing date if the submitted correction was completely contained in the earlier application. Again see PCT Rules 4.18 and 20.6.

An all too common occurrence is that applicants will file an international application in the U.S. Receiving Office and no applicant has a U.S. residence or nationality. Applicants are cautioned to be sure that at least one applicant is a resident or national of the U.S. before filing in the U.S. Receiving Office. Where no applicant indicated on the request papers is a resident or national of the United States, the USPTO is not a competent receiving Office for the international application under PCT Rule 19.1(a). Nonetheless, the date the international application was filed in the USPTO will not be lost as a filing date for the international application if at least one applicant is a resident or national of any PCT Contracting State. Under PCT Rule 19.4, the USPTO will receive the application on behalf of the International Bureau as receiving Office (PCT Rule 19.4(a)) and, upon payment of a fee equal to the transmittal fee, the USPTO will promptly transmit the international application to the International Bureau under PCT Rule 19.4(b). However, if all of the applicants are indicated to be both residents and nationals of non-PCT Contracting States, PCT Rule 19.4 does not apply, and the application is denied an international filing date.

The USPTO is also not competent to receive international applications that are not in the English language and, upon payment of a fee equal to the transmittal fee, the USPTO will forward such applications to the International Bureau under PCT Rule 19.4 provided they are in a language accepted by the International Bureau as receiving Office.

A discussion of PCT Rule 19.4 is also included in MPEP § 1805.

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