Nationalizing PCT Applications in the US
Which is Better, 371 Route or Bypass CON Route?
Nationalizing PCT Applications in the US
Which is Better, 371 Route or Bypass CON Route?
371 Nationalization v. Bypass Continuation
Let’s get ready to…
…Training- Review of Some of the Basics
PCT Applications- Nationalization Routes
• PCT Applications that designate the US areconsidered US applications, so...
• Can Nationalize under 35 USC 371- traditional nationalization- a371 nationalization is technically the same application as the PCTapplication
• Can file a “Bypass CON”- a continuation application that claimspriority under 35 USC 120 to the PCT application as acontinuation application of the PCT application
• 35 U.S.C. 363 provides that "[a]n international applicationdesignating the United States shall have the effect, from itsinternational filing date under article 11 of the treaty, of anational application for patent regularly filed in the Patentand Trademark Office....“ --See, MPEP 1895
PCT Applications- 371 Nationalization Route
PCT Application
International Phase National Phase
US National Stage
Transmittal
-Same Int'l App. No.-Assigned New US App. No. (for tracking)-Claims & Spec. amendments are based onthose during international phase.-Generally, do not need a new IDS for Refs.cited in Search Report/Written Opinion (as longas transmitted to USPTO).-Generally, do not need to resubmit certifiedcopies of foreign priority documents as long astransmitted to the USPTO (but may need tosubmit verified translation).
Treated as if the Same Application
PCT Applications- Bypass Continuation Route
PCT Application
International Phase
ContinuationApplication
“This application is a continuation ofInternational Application No. PCT/...
Treated as a New Application
CON.
-New US App. No.-Claims & Spec. amendments are based on what is filed- amendmentsduring international phase do not count.-Need a new IDS for Refs. cited in Search Report/Written Opinion.-Need to resubmit certified copies of foreign priority documents and mayneed to submit verified translation.
The Match- Let’ s Get Ready to…. Compare
Round
1
…Filing Requirements
PCT Applications- Filing Requirements
• 371 Nationalization
• Transmittal (PTO-1390)
• Filing Fees- Filing, Search,and Examination fees, etc.
•May also need..
• Preliminary Amendment
- to remove multipledependent claims
• Bypass CON
• Application- specification,claims, abstract & drawings
• Need priority claim
• Filing Fees- not required
371 Transmittal
…Practical Issues
Round
2
PCT Applications- Practical Issues Filing
• 371 Nationalization
• Sometimes, not sure which claimsare pending due to amendmentsduring the international phase
• Have to deal with multipledependencies
• Not familiar with transmittal
• Do not need to submit copy of theapplication and other paper work-just makes USPTO file messy
• No new matter allowed (i.e., noCIP’s)
• Bypass CON
• Standard practice
• Allows addition of newmatter (CIP) –see, MPEP1895
…Foreign Certified Copies
Round
3
Certified Foreign Priority Documents
• Easily missed- need to check PAIR– If Examiner comes across intervening reference, they may
request foreign priority documents (to show entitled toearlier date)
– Otherwise, no notice!
• To Perfect a Foreign Priority Claim
• USPTO Needs a Certified Copy
1. Paper Certified Copy, OR
2. Patent Document Exchange (PDX) Request- ElectronicTransfer to USPTO (automatic now)- but some countriesnot yet participating.
• Verified English Translation- for non-English foreign prioritydocuments
PCT Applications- Foreign Certified Copies
• 371 Nationalization
• Certified copies of foreignpriority applications are notrequired so long as theInternational Bureautransmits the copies to theUSPTO.
• If priority application is not inEnglish, you will still need totransmit a verifiedtranslation.
• Bypass CON
• You will need to submit acertified copy of foreignpriority application
• BUT now have PatentDocument Exchange(PDX) program with amajority of countries
• USPTO will nowautomatically request
• If priority application is not inEnglish, you will still need totransmit a verifiedtranslation.
…After Filing Formalities
Round
4
PCT Applications- After Filing Formalities
• 371 Nationalization
• Filing Receipt takes a longtime to receive
• Signed Declaration- will notreceive a filing date until asigned declaration is filed(hurts patent term as well)
• Bypass CON
• Filing Receipt- processedrelatively fast
• Signed Declaration- filingdate is not based on whendeclaration is filed
• Filing Fees- can file later
PCT Applications- After Filing Formalities
• 371 Nationalization•Publication• Claim amendments made at the
time of nationalization via aPreliminary Amendment mightbe published (or not) at thediscretion of the USPTO.
• Normally, the application ispublished without the amendedclaims from the PreliminaryAmendment.
• This is a BIG problem becauseyou might time from yourdamages calculation forprovisional rights.
• Bypass CON• Publication• As long as the amended
claims are incorporated intothe body of the application(i.e., not via a PreliminaryAmendment), they will bepublished.-Any new matter questions-
you can submit remarks.• Eliminates the problem with
damages calculations.
…Information Disclosure Statements
Round
5
PCT Applications- IDS Comparison
• 371 Nationalization
• Do not need to submit IDS forreferences cited duringinternational phase (e.g., in thesearch report) so long asUSPTO Form PCT/DO/EO/903indicates search resultstransmitted to national file.
•Still probably good practice tosubmit IDS becausereferences will not be listed onthe face of the patent unlesscited on IDS. --see, MPEP609.03
• Will need to submit IDS for newreferences
• Bypass CON
• Need to submit an IDS
• “When filing a continuing application that claimsbenefit under 35 U.S.C. 120 to an internationalapplication that designated the U.S. (see MPEP§ 1895), it will be necessary for the applicant tosubmit an information disclosure statementcomplying with 37 CFR 1.97 and 1.98 in thecontinuing application listing the documentscited in the international search report and/or theinternational preliminary examination report ofthe international application if applicant wishesto ensure that the information be considered bythe examiner in the continuing application.<“--MPEP 609.02
• Will need to submit IDS for newreferences
…Restriction Practice
Round
6
PCT Applications- Restriction
• 371 Nationalization
• Relies on PCT unity ofinvention standard
• Usually results in lessindependent claims
• This can cause problemsbecause US examiners maynot be familiar with thestandard and incorrectly useUS standard restrictionpractice
• Bypass CON
• Uses US standard restrictionpractice (independent &distinct)
• On average, moreindependent claims- morepermissive
• US Examiners are familiarwith the standard
…Prosecution & Fees
Round
7
PCT Applications- Prosecution & Fees
• 371 Nationalization
•Totally clean search report/opinion(i.e., all claims are patentable)- veryunlikely
• May receive marginal filing feediscount if have clean SearchReport/Written Opinion by US as ISA
•$320 Savings US/ISA•$650 Savings other normal ISA’s
•New- May use PCT-PPH to speedup examination when originatingapplication is filed in certaincountries (JPO, EPO, etc.)• No fee now required
• Bypass CON
• Bypass route is the only way touse traditional acceleratedexamination (371 will not work)--See, USPTO’s AcceleratedExamination FAQs
• Clean written opinion- still pay thesame fees (Rare)
• PCT-PPH available for bypassapplications as well
…Patent Term Adjustment
Round
8
PCT Applications- Patent Term Adjustment
• 371 Nationalization
•Will lose patent term if:
• Do not request expeditedexamination (check the rightbox on transmittal).
• File signed declaration afternationalization date.
• Bypass CON
• Will only lose patent term iffile signed declaration morethan 3 months after maildate of missing parts.
Quick Patent Term Adjustment Refresher
• 35 USC §154(b)(1) Periods• (A) Guarantee of prompt USPTO responses- 14 months for
USPTO to send an Office Action or Notice of Allowance (plusvarious 4 month periods)- Examination Delays
• (B) Guarantee of no more than 3-year application pendency-USPTO fails to issue patent 3 years after actual filing date
• No Double Counting When Periods Overlap• § 154(b)(2)(A) "[t]o the extent that periods of delay attributable to
grounds specified in paragraph (1) overlap, the period of anyadjustment granted under this subsection shall not exceed theactual number of days the issuance of the patent was delayed."
Wyeth v. Kappos (Fed. Cir. 2009)
Issue: When does the overlap occur?USPTO
37 CFR § 1.703(f)- B guarantee period starts at the time ofthe filing of the application, not 3 years after the filingdate.
You only get the greater of the A or B periods
USPTO – 3 Years PTA
OverlapHere
OverlapHere
Filingdate
14 mo.date
OfficeActionissued
3 yeardate
Issuefee
paid
4 mos. fromissue feepayment,patentshould issue
Issuedate
A Delay
B Delay
A Delay
Wyeth v. Kappos (Fed. Cir. 2009)
Federal Circuit
A & B overlap only occurs after 3 years from the filing date.(A+B Formula)
1 Year USPTO – 3 Years PTA
Filingdate
14 mo.date
26 mo.OfficeActionissued
3 yeardate
Issuefee
paid
6yearsissuedate
A Delay
B Delay
A Delay
OverlapHere
4 mos. fromissue feepayment,patentshould issue
Wyeth v. Kappos (Fed. Cir. 2009)
• USPTO Response• USPTO will be processing recalculation requests under
an interim procedure that is available to a patenteewhose patent issues prior to March 2, 2010, and whorequests it no later than 180 days after the issue date.
• This procedure is available only for alleged errors incalculation that are specifically identified in Wyeth.
• Information on requesting a recalculation of patent termis on the USPTO Web site athttp://www.uspto.gov/patents/announce/pta_wyeth.pdf.
Wyeth v. Kappos (Fed. Cir. 2009)
• USPTO Wyeth PTA Form PTO/SB/131
Novartis Challenges Interim Procedure
• Novartis• "[t]hese interim procedures included an
expedited, informal procedure for seekingrecalculation of PTA solely on the basis ofWyeth, but extended that remedy only topatents issued on or after September 2, 2009."… it would “deny as untimely any request forrecalculation of patent term adjustmentindicated on a patent that is not filed within180 days of the day the patent was granted."
Japan Tobacco Petition
USPTO Miscalculating Period B for PCT 371 National Stage Applications
Originally, USPTO considered the B Period filing date= when an internationalapplications fulfilled the requirements of 35 U.S.C. § 371 (e.g., filed signedOath/Dec.).
BUT, 37 C.F.R. § 1.702(b) states that "the term of an original patent shall beadjusted if the issuance of the patent was delayed due to the failure of theOffice to issue a patent within three years after the date on which theapplication was filed under 35 U.S.C. 111(a) or the national stagecommenced under 35 U.S.C. 371(b) or (f) in an international application.”
Section 371(b) states that subject to § 371(f), "the national stage shallcommence with the expiration of the applicable time limit underarticle 22 (1) or (2), or under article 39 (1)(a) of the [PCT].“ = 30Month Chapter II Deadline
So the B-Period filing date for 371 national stages should be the 30-MonthChapter II deadline (if filed under 371(b)-- more later)
Japan Tobacco Petition
USPTO
USPTO relents- B-delay should be calculated based on the dateon which the national stage commenced, not the date onwhich the requirements of § 371(c) were fulfilled.
Chap IIDeadline
(30 Months)
File SignedDeclaration-satisfy 371(c)
3-Year B-Period
Japan Tobacco Petition
PCT Patent Term Landmines
B-Period Delay Landmine- Early 371 Nationalization
If Nationalize under 371 before 30-month chapter II deadline andsatisfy 371(c) requirements (e.g., pay fees, signed Declaration,etc.), you still need to expressly request early processingunder 371(f) to get the nationalization date for B-Delay filing date.
If not, B-Delay filing date will be based on the Chapter II (30-month) deadline & not the earlier nationalization date.
Contrast regular utility or bypass CON- B-Period filingdate is the actual filing date of the application.
Japan Tobacco Petition
B-Delay Period Landmine
Nationalize PCT Application before the Chapter II Deadline
Satisfy 371(c)- file signed declaration, etc.Expressly request early processing (check the
box on form)
Chap IIDeadline
(30 Months)
3-Year B-Period
Nationalize
B-Delay filing date startsbefore Chapter II Deadline
Japan Tobacco Petition
B-Delay Period LandmineNationalize PCT Application before the Chapter II
Deadline BUTFail to satisfy 371(c) ORFail to expressly request early examination
Chap IIDeadline
(30 Months)
File SignedDeclaration-satisfy 371(c)
3-Year B-Period
Nationalize
B-Delay filing date startson Chapter II Deadline
Japan Tobacco Petition
B-Delay Period Landmine- COMPARE
Instead file via the bypass CON route BUT
Fail to file signed declaration ORFail to expressly request early examination
Chap IIDeadline
(30 Months)
File SignedDeclaration
3-Year B-Period
Bypass CONFiling Date
B-Delay filing date startsbefore Chapter II Deadline
PCT- Patent Term Adjustment
PCT Patent Term A-Delay Landmines
A-Delay Date is still based on fulfillment of national requirementsunder 371(c).
For example, if you do not file a signed declaration when thePCT application is nationalized, you lose A-term until youfile the signed declaration.
Contrast to a regular utility or bypass CON- where you do notlose A-term so long as you file the signed declarationwithin 3-months of Notice to File Missing Parts
A-Delay Period Landmine
Nationalize PCT application under 371
Fail to file signed declaration withnationalization
PCT- Patent Term Adjustment
Chap IIDeadline
(30 Months)
File SignedDeclaration
Nationalize
A-Delay- lose term- untilfile signed DeclarationLose Term
A-Period
PCT- Patent Term Adjustment
A-Delay Period Landmine- COMPARE
Instead file via the bypass CON route
Fail to file signed declaration when application filed
File signed declaration 1-month after missing parts deadline
Chap IIDeadline
(30 Months)
File SignedDeclaration w/ 1-MonthEOT + surcharge
Bypass CONFiling Date
DO NOT LOSE ANYDO NOT LOSE ANYAA--TERM!TERM!
2 Month DeadlineFor Missing Parts
A-Period
…And the Winner is…
PCT- 371 Nationalization or Bypass CON?
What is the best way to nationalize a PCT ?Answer: Generally, bypass CON!!!
371Nationalization
Bypass CONSimplicity
PDX
Patent Term
US Restriction...
Want to know more?Chuck SchmalPatent Attorney
Woodard, Emhardt, Moriarty, McNett & Henry LLPChase Tower
111 Monument Circle, Suite 3700Indianapolis, IN 46204