1895.01 Handling of and Considerations in the Handling of Continuations, Divisions, and Continuations-In-Part of PCT Applications [R-07.2022]

Pursuant to 35 U.S.C. 365(c), a regular national application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b) (not under 37 CFR 1.53(d)) may claim benefit of the filing date of an international application which designates the United States. Thus, rather than submitting a national stage application under 35 U.S.C. 371, applicant may file a continuation, divisional, or continuation-in-part of the international (PCT) application under 35 U.S.C. 111(a). Such applications are often referred to as “bypass” applications.

A typical time line involving a continuing application filed during the pendency of an international application is illustrated as follows:

To obtain benefit under 35 U.S.C. 120 and 365(c) of a prior international application designating the U.S., the continuing application must:

• (A) include a specific reference to the prior international application
• (B) be copending with the prior international application, and
• (C) have at least one inventor in common with the prior international application.

With regard to (A), if the continuing application was filed prior to September 16, 2012, the specific reference to the international application required under 35 U.S.C. 120 and 365(c) must either be contained in the first sentence(s) of the specification following the title or included in an application data sheet. See 37 CFR 1.78(d)(2) and 37 CFR 1.78(h). If the continuing application was filed on or after September 16, 2012, the specific reference to the international application required under 35 U.S.C. 120 and 365(c) must be contained in an application data sheet. 37 CFR 1.78(d)(2). The specific reference must identify the parent international application by international application number and international filing date and indicate the relationship of the applications (i.e., continuation, continuation-in-part, or division). See 37 CFR 1.78(d)(2) and MPEP § 211.02. The required reference must be submitted within the time period provided by 37 CFR 1.78(d)(3). This time period is not extendable. A certified copy of the international application (and an English translation of the international application) may be required by the examiner to perfect the claim for benefit under 35 U.S.C. 120 and 365(c) if the international application did not originate in the United States and such is necessary, for example, where an intervening reference is found and applied in a rejection of one or more claims. If the international application was published by the International Bureau pursuant to PCT Article 21, then a certified copy would not normally be necessary.

If benefit under 35 U.S.C. 119(e), and/or under 35 U.S.C. 120 and 365(c) is being claimed to an earlier filed national application (or international application designating the U.S.) via an intermediate international application designating the U.S., then the intermediate international application must contain a specific reference to the earlier application, as required under 37 CFR 1.78. The specific reference will usually be included on the cover page of the published international application and/or may appear in the first sentence(s) of the description of the published application. A lack of a proper reference in the published international application does not necessarily mean that a proper reference is not contained in the intermediate international application. Accordingly, the international application file (if the USPTO was the receiving Office) may have to be inspected to determine whether the requirements under 37 CFR 1.78 were satisfied after publication of the international application. For example, the intermediate international application file may contain the specific reference in a separate paper filed after publication but during the pendency of the international application, or a decision granting a petition to accept a late benefit claim may be present in the application file. See MPEP § 211.04. The examiner may contact the International Patent Legal Administration for assistance.

With regard to (B), a U.S. national application is considered copending with a prior international application designating the U.S. if the international application was pending on the filing date of the U.S. national application. Generally, except in cases where the international application has been withdrawn (either generally or as to the United States), an international application becomes abandoned as to the United States upon expiration of 30 months from the priority date (i.e., the priority date claimed in the international application or, if no priority is claimed, the international filing date) unless a proper submission under 35 U.S.C. 371 to enter the U.S. national phase is filed prior to the expiration of this 30-month period. See MPEP §§ 1893.01(a)(1) and 1893.02. However, if the international application is one where the 20-month period from the priority date expired before April 1, 2002, then it was necessary to file a demand electing the United States prior to the expiration of 19 months from the priority date in order to extend the international phase to 30 months from the priority date. If such a demand was not timely filed, then under former 37 CFR 1.494, such an international application became abandoned at the expiration of 20 months from the priority date unless a proper submission under 35 U.S.C. 371 to enter the U.S. national phase was made prior to the expiration of 20 months from the priority date. Accordingly, if the international application is not subject to the filing of a demand in order to delay entry into the U.S. national phase to 30 months from the priority date, then a national application filed prior to the expiration of this 30 month period will be copending with the international application unless the international application was withdrawn, either generally or as to the United States, prior to the filing of the national application. To determine whether the application was withdrawn, the examiner must either review the Home Copy of the international application file (if the USPTO was the receiving Office), or require applicant to certify that the international application was not withdrawn or considered to be withdrawn, either generally or as to the United States, prior to the filing date of the national application claiming benefit under 35 U.S.C. 120 and 365(c) to such international application. In order to expedite examination, applicant should certify at the time of filing a national application claiming benefit under 35 U.S.C. 120 and 365(c) to an international application that the international application has not been withdrawn. If the national application claiming benefit to the international application was filed after the expiration of this 30-month period, then there will be no copendency in the absence of a timely and proper submission to enter the U.S. national phase under 35 U.S.C. 371. The existence of a national stage application may be checked through the Patent Data Portal and the records of the national stage application should be consulted to verify copendency. Additionally, if the 20-month period from the priority date of the international application expired before April 1, 2002 and the national application claiming benefit under 35 U.S.C. 120 and 365(c) was filed later than 20 months from the priority date of the international application, the applicant may be required to submit proof of the filing of a demand electing the United States within 19 months from the priority date. This proof may be in the form of a copy of the “Notification of Receipt of Demand by Competent International Preliminary Examining Authority” (Form PCT/IPEA/402) showing the demand was received prior to the expiration of 19 months from the priority date, and a copy of the “Notification Concerning Elected Offices Notified of Their Election” (Form PCT/IB/332) showing the election of the United States. If the parent international application was not copending (i.e., abandoned or withdrawn), benefit under 35 U.S.C. 120 is not possible.

With regard to (C), inventors will normally be identified on the cover page of the published international application. In addition, such information is indicated in the PCT Gazette, which is available in electronic form from WIPO’s website (www.wipo.int/pct/en/official_notices).

PRIORITY CLAIMS UNDER 35 U.S.C. 119 (a)-(d)

A claim for foreign priority under 35 U.S.C. 119(a) - (d) must be made in the continuing application in order to obtain the benefit of the filing date of the prior filed foreign application. This is true regardless of whether such a claim was made in the parent international application. A foreign priority claim is proper in the continuing application if the continuing application or the parent international application was filed not later than 12 months after the filing date of the foreign application. See 37 CFR 1.55(b). In addition, a foreign priority claim is proper in the continuing application if the continuing application or the parent international application was filed after expiration of the 12 month period set forth in 37 CFR 1.55(b) but within two months from such expiration, if the right of priority is restored under 37 CFR 1.55(c). The required claim must be made within the time period set forth in 37 CFR 1.55(d)(1). This time period is not extendable. See MPEP § 214.01. A certified copy of any foreign priority document must be provided by the applicant unless the requirements of 37 CFR 1.55(h) or 37 CFR 1.55(i) have been met or the parent international application has entered the national stage under 35 U.S.C. 371 and the national stage application contains the priority document from the International Bureau. See MPEP § 1893.03(c). In the latter case, the applicant, in the continuing application, may state that the priority document is contained in the national stage application.

For a discussion of U.S. national applications filed under 35 U.S.C. 111(a) having foreign priority claims under 35 U.S.C. 119(a) - (d) and 365(a) to a prior international application designating at least one country other than the United States, see MPEP § 213.01.