PCT Practice And Filing A Continuation Application As An Alternative To National Stage Entry In The United States
Abraham J. Rosner
Sughrue, Mion, Zinn, Macpeak & Seas
A. INTRODUCTION
A typical PCT route for filing a patent application in the United States is the filing of an international (PCT) application which designates the United States (and perhaps other countries), and which further claims priority from a foreign (home) application. To preserve the right of priority, the PCT application must be filed within 12 months of the filing date of the foreign priority application. To avoid abandonment of the PCT application as to the United States, the applicant must enter the U.S. national phase not later than 20 months from the priority date (37 C.F.R. §1.494). Alternatively, the applicant can elect the United States by the expiration of 19 months from the priority date and request international preliminary examination under PCT Chapter II. In that case, the applicant must enter the U.S. national stage not later than 30 months from the priority date (37 C.F.R. §1.495).
Instead of completing the requirements for entry into the national stage under 35 U.S.C. §371(c), it is possible to instead file a continuation or continuation-in-part (CIP) of a PCT application designating the United States.
There are several potential benefits and drawbacks in selecting the continuation route.
One advantage is that the continuation route can move back in time the offensive prior art date of a U.S. patent under 35 U.S.C. §102(e) which issues from the PCT application. The continuation route also allows the applicant revise the PCT application prior to filing in the United States or to add subject matter to the specification in the form of a CIP application. On the other hand, the applicant is limited to filing a literal translation of the PCT application when entering the U.S. national phase. The USPTO fee for filing a continuation application is also somewhat less than the national stage entry fee.
The disadvantages are a reduced patent term in some circumstances and application of regular restriction criteria as opposed to the more liberal unity of invention criteria for a PCT case.
Some of the requirements and considerations in filing a continuation application as an alternative to national stage entry are discussed in detail below.
B. SPECIFIC REQUIREMENTS
The statutory basis for filing a continuation application of a PCT application designating the United States is found in 35 U.S.C. §363, §365(c) and §120.
More particularly, 35 U.S.C. §363 provides that an international application designating the United States has the effect of a national application regularly filed in the Patent and Trademark Office except as provided under §102(e). 35 U.S.C. §365(c) provides, in part, that in accordance with the conditions and requirements of §120, a national application shall be entitled to the benefit of the filing date of a prior international application designating the United States. 35 U.S.C. §120 sets forth the requirements for obtaining the benefit of an application previously filed in the United States, or for obtaining the benefit of a PCT application designating the United States under §363.
The continuation application is filed under 35 U.S.C. §111(a) and 37 C.F.R. §1.53 (i.e., the continuation cannot be a file wrapper continuation). To obtain the benefit of the PCT filing date under 35 U.S.C. §365(c) and §120, the continuation application must (1) include a specific reference to the PCT application, (2) be co pending with the PCT application, and (3) have at least one inventor in common with the PCT application. The MPEP discusses this alternative filing route at §§ 1895 and 1896.
Typically, a PCT applicant will claim the benefit of a foreign application filed within 12 months of the PCT filing date. The statutory basis for obtaining the right of priority to the foreign application is 35 U.S.C. §365(b). Namely, §365(b) provides that an international application designating the United States shall be entitled to the right of priority based on a prior foreign application.
A claim for foreign priority under 35 U.S.C. §119(a) must be made in the continuation application in the same manner as in a national stage application or as in any other regularly filed national application which seeks the benefit of an earlier filed foreign application.
The foreign priority claim is proper if (1) a claim for foreign priority was made in the international application, and (2) the foreign application was filed within 12 months prior to the international filing date.
The unity of invention criteria (37 C.F.R. §1.475) are more liberal for a PCT application and a national phase application as compared to the restriction criteria (37 C.F.R. §§1.141 and 1.142) that are applied to a regularly filed national application such as a continuation application. For example, the examiner can require restriction between a product and a process of use of that product in a continuation application if, e.g., the process for using as claimed can be practiced with another materially different product (MPEP §806.05(h)). However, the examiner cannot require such an election in a national phase application (further providing that the two groups of claims are directed to a Òsingle general inventive conceptÓ). This difference should be taken into consideration when selecting between national stage entry and filing of a continuation application. That is, one would want to avoid the extra expense of filing a divisional application where the PCT application contains restrictable claims.
An exact, literal translation of the international application is to be filed upon entry into the national stage. PCT Article 46, MPEP §1893.01(d) and 35 U.S.C. §375(b).
On the other hand, a benefit of the continuation route is that the specification of the PCT application can be revised. More particularly, the case may be revised prior to filing the continuation application, whereas a literal translation is required for national stage entry. Thus, the continuation route may be attractive where extensive revision is being considered. In order to obtain the benefit of the filing date of the PCT application, the claims of the continuation application must find support in the PCT application.
The continuation may also be filed as a continuation-in-part of the PCT application in case of changes and/or additions that are not supported by the PCT application. This is discussed in MPEP §§1895 and 1896.
A U.S. patent which issues from a regularly filed national application under 35 U.S.C. §111(a) is prior art under 35 U.S.C. §102(e) as of its effective U.S. filing date.
It is often desirable to secure an early §102(e) prior art date because this is the date that the issued patent is prior art against other U.S. applicants.
However, the prior art date of a patent under 35 U.S.C. §102(e) which issues from a national stage application is the date that the requirements of 35 U.S.C. §371(c)(1), (2) and (4) are met (i.e., the date on which a copy of the international application with any necessary translation, national fee and oath or declaration are on file). Typically, this coincides with entry into the national phase (i.e., at or near 20 months or 30 months from the priority date). Furthermore, because the PCT application is published soon after the expiration of 18 months from the priority date, the published PCT application will generally have an earlier prior art date than the §102(e) date of the U.S. patent.
According to the U.S. Patent and Trademark Office (MPEP §1896), the §102(e) offensive prior art date of a U.S. patent based on a continuation of a PCT application designating the United States is its PCT filing date.
However, the USPTO's position conflicts with 35 U.S.C. §363 which very clearly provides that a PCT application designating the United States shall have the effect of a regularly filed national application, except as otherwise provided in §102(e). In this regard, §102(e) provides that a U.S. patent which issues from an international application is prior art as of the date when the requirements of §371(c)(1), (2) and (4) are satisfied (not the PCT filing date).
Apparently, there are no Board or court decisions on point. It must be emphasized that the USPTO's construction of the statute is not the law. The court can reject administrative constructions that are inconsistent with the statute, and will give no deference to the USPTO's interpretations and conclusions.
On the other hand, a U.S. patent based on a continuation application of a PCT application designating the United States is clearly available as prior art under §102(e) as of the filing date of the continuation application. Therefore, a prudent course of action when using the continuation route would be to file the continuation application as soon as conveniently possible instead of waiting until close to the end of the 20 or 30 month period from the priority date.
If the primary motivation for filing the continuation is to move back the §102(e) prior art date, then a more efficient way to accomplish this would be to file a regular U.S. application claiming convention priority of the foreign application. A better strategy yet would be to file a U.S. provisional application concurrent with the foreign application, and within 12 months thereof file a regular U.S. application claiming priority from both the foreign application and the provisional application. A U.S. patent which issues therefrom is prior art under §102(e) as of its provisional filing date (provided that the patented claims find support in the provisional application).
A patent which issues based on a PCT application filed on or after June 8, 1995 will have a mandatory term of 20 years from the PCT filing date, regardless of whether the continuation route or national stage entry is selected.
However, a patent which issues from a national stage application that is based on a PCT application designating the United States and filed prior to June 8, 1995 will have a term that is the longer of 17 years from the date of issue or 20 years from the filing date of the PCT application.
On the other hand, a patent which issues from a continuation application filed on or after June 8, 1995 will have a mandatory term of 20 years from the PCT filing date.
Therefore, patent term must be considered when selecting between national stage entry (now PCT Chapter II only) and filing a continuation application for PCT applications filed prior to June 8, 1995. However, the patent term will always be 20 years from the PCT filing date for PCT applications filed on or after June 8, 1995.
C. CONCLUSION
The continuation route as an alternative to national phase entry offers a number of advantages (e.g., allows the applicant to revise the specification or file a CIP application and to also move back the §102(e) offensive prior art date), but also presents some disadvantages (e.g., results in a reduced patent term in some circumstances and the application of regular restriction criteria as opposed to the more liberal unity of invention criteria for a PCT case). Therefore, these advantages and disadvantages should be considered on a case by case basis when selecting applications for processing via the continuation route.