CHAPTER 20 THE NATIONAL PHASE IN THE US (a 371 application) Ch.20/A: Entry into the National Phase in the US Entry from the PCT into the National phase in the US happens at 30 months from the earliest priority date. The requirements for entering the National phase are governed by US patent law, 35 USC 371 (MPEP 1893). Use transmittal Form PTO-1390. We will discuss the transmittal in detail at the end of this section. A National phase application filed under 35 USC 371 differs in certain ways from a regular US application (filed under 35 USC 111(a)). Although a National phase application in the US is treated quite similarly to a regular US application, there are some differences in filing procedures (discussed below) and in prosecution practice and law (MPEP 1895.01 – 1896). It is essential that in the transmittal the applicant explicitly states that the application is being filed as a National stage application under 35 USC 371. If this is not clearly stated, the USPTO will treat the application as a regular US application under 35 USC 111(a). This statement is part of the standard transmittal for 371 applications, Form PTO-1390. See below. Also see MPEP 1893.03(a). A National stage application is technically just a new incarnation of the International application and is given the same international filing date as the International application. The following must be filed in the USPTO to enter the US National Stage under 35 USC 371: a) National Phase Transmittal, Form PTO-1390. This is the standard transmittal for the 371 application – see below. b) Fees: Basic National Stage Fee, National Stage Search Fee, and National Stage Examination Fee. Also, if appropriate, excess claim fees and application size fee. These are equivalent to the fees for a regular US patent filing (see Chapter 3/B). The basic national fee MUST be filed by the 30-month deadline. This deadline is NOT EXTENDABLE, and if it is not filed by the deadline, the application will be abandoned and will have to be revived at considerable expense MPEP 711.03. Check the current fee schedules online at the USPTO.
A note about fees: You will remember that during US prosecution, you can (and should) always use a blanket authorization to charge additional fees to a deposit account. But, by law, fees are authorized under different sections of 37 CFR. Regular US fees are usually authorized under 37 CFR 1.16, but National stage fees are authorized under 37 CFR 1.492. If the wording of your blanket authorization "…authorizes the Commissioner to charge all fees under 37 CFR 1.16…," this will NOT constitute a valid authorization to charge additional
National stage fees under 37 CFR 1.492. Examine any such authorization to make sure it is not limited to any specific section of 37 CFR.
c) A copy of the International application MUST be filed by the 30-month deadline. This deadline is NOT EXTENDABLE and, if not met, the application is abandoned. BUT this step is not required if (a) the USPTO was the receiving Office for the International application, OR (b) the International Bureau (IB) has already sent a copy of the International application to the USPTO (as a designated Office) - a copy is ordinarily sent shortly after publication at about 18 months from the priority date. The IB mails Form IB/308 to the applicant upon which the applicant can rely for proof that a copy of the International application has been sent. Form IB/308 will list all the documents sent from the IB to the USPTO, including any amendments made under Article 19 (see below). You will usually be filing electronically, but Priority Mail Express procedures are acceptable for filing the application and fee. Note that facsimile transmission of the basic national fee and/or the copy of the International application is NOT acceptable. Likewise, Certificate of Mailing by First Class Mail procedures do NOT apply for the filing of the fee and/or the copy of the international application. d) A copy of any Article 19 amendments if made (and English translations if necessary). This is not required if the Article 19 amendments have already been sent to the USPTO by the International Bureau. Check Form IB/308 (which is sent about 18 months from the priority date and lists all the documents sent from the IB to the USPTO). If the Article 19 amendments are not filed by the 30-month deadline, they will be considered to have been cancelled, but they may be requested (again) using a preliminary amendment filed before the first Office Action. Note that despite the requirement to send Article 19 amendments, the applicant is not required to send the USPTO copies of the ISR, Written Opinion, Article 34 amendments, or the IPRP Ch. II. The IB is assumed to have already sent these things to the USPTO. We strongly suggest, however, as good practice, that you send copies of all such documents unless you have received a notice that such documents have already been transmitted to the USPTO. e) An English translation of any non-English annexes to the IPRP CHAPTER II. This can be sent late, see below. f) An English translation of the application if the application was filed in another language. This can be sent late, see below. g) An Application Data Sheet. Technically you are not required to file one with a 371, but we highly recommend that you always file an ADS. h) An oath or declaration signed by all inventors. This can be sent late (see below). Practically speaking, you can just use the same type of declaration that you use for a regular US application. A declaration need not be sent if it has been previously filed with
the original PCT Request form (Box VIII) within the time period set in PCT Rule 26ter, during the PCT phase prior to the 20/30 month date from the priority date, or in response to a Notice of Missing Requirements. The declaration must satisfy the requirements of 37 CFR 1.497 for US National stage entry. It must -be executed according to 37 CFR 1.66 (oaths) or 37 CFR 1.68 (declarations), -identify the specification to which it is directed, and -include the "original and first inventor" clause. The declaration must satisfy the requirements of 37 CFR 1.63 (the normal declaration you send with a regular US application) before a US patent can be issued. If it does not, a new (supplemental) declaration may be required during prosecution. The provisions of 37 CFR 1.63 are more stringent than those of 37 CFR 1.497, so it is best to make sure that whatever would be in a regular declaration under 1.63 is also in the oath sent when entering the National stage. If the signed declaration, translation of the application (if required), or translation of any annexes (if required) are not filed by the 30-month deadline, the applicant will be notified and given a period of time in which to provide them (MPEP 1893.01(b) and following sections). This period will generally be one month from the mailing date of the notice or 31 months from the priority date, whichever is later. This period can be extended under 37 CFR 1.136(a). If the signed declaration is late, a surcharge will be required under 37 CFR 1.492(e). If the translation is late, a processing fee will be required under 37 CFR 1.492(f). These rules and fees can be a little confusing, so you should always ask the USPTO exactly what is required by calling (800) 786-9199. Beware - Use the correct declaration! When filing a 371 National phase US application from a PCT, remember to use the correct declaration. If you do not, the USPTO will send you a notice telling you that your declaration was defective and requesting another. You will have to get all the inventors to sign again. The important thing to remember is that the declaration you use depends on the INTERNATIONAL FILING DATE, not the date you filed the US national application under 371. If the international filing date is before 16 September 2012, you must use the old pre-AIA (SB) forms. If the IA date is after 16 Sept 2012, you must use the new AIA forms. See http://www.uspto.gov/patents/init_events/pct/national.jsp. It has two separate sections with different forms you might use depending on your international filing date: A1. Forms – Pre-AIA (for international filing date before 16 September 2012). A2. Forms – AIA (for international filing date on or after 16 September 2012). If your international filing date is before 16 September 2012, the declaration you will use will be PTO/SB/01 (plus SB/02 for additional inventors). If your international filing date is after 16 September 2012, you generally will use PTO/AIA/08 (plus AIA/10 for additional inventors). Form AIA/08 may be used with or without an Application Data Sheet (ADS) (PTO Form AIA/14). You may alternatively
use PTO/AIA/01, which can be used only when using an ADS. And under specific circumstances, you may have to use PTO/AIA/02, which is the Substitute Statement In Lieu of an Oath or Declaration for Utility or Design Patent Application (discussed elsewhere in the course). For the 371 forms, see http://www.uspto.gov/patents/init_events/pct/national.jsp. i) Other documents commonly filed with a 371 application. A power of attorney is often filed with a 371 application. If the international filing date is before 16 September 2012, you must use the old pre-AIA power of attorney (SB) forms. If the IA date is after 16 Sept 2012 then you must use the new, AIA power of attorney forms. Also, because you want to be absolutely sure that the USPTO has all the required application elements from the PCT, certain other documents received from the PCT are commonly filed along with the 371 application. They include a copy of the published application, the ISR, the Written opinion, and IB301, IB304, and IB308, proving that the US has been designated and the application and all priority documents have been forwarded to the appropriate national Offices, including the USPTO. Fees required for national entry The fees for national entry are Basic National Stage Fee, National Stage Search Fee, and National Stage Examination Fee. Additional fees may be, when appropriate, excess claim fees and application size fee. Always check the fees on the USPTO website to make sure you have the most up-to-date fees. The fees are also listed on the National Phase Transmittal, Form PTO-1390. All filing fees are reduced for a Small/Micro Entity. The rules are the same as those for any US application (37 CFR 1.9, see earlier section). English translation of the international application This may be filed prior to the 30-month date in response to a Notice of Missing Requirements, and the time limit set in the Notice may be extended under 37 CFR 1.136(a). There is, however, an extra processing fee (late fee) for any translation filed after the 20/30-month date. This fee is NOT reducible for Small Entities. A note about biotech applications If the International application contains a sequence listing, the applicant will need to follow the rules as stated by 37 CFR 1.821 to 1.825 at the time of the National phase entry. Failure to comply will result in the applicant‟s receiving a Notice to Comply with Requirements for Patent Applications Containing Nucleotide Sequence (Form PCT/DO/EO/920) that will set forth the required items and deadlines for response. Transmittal for filing a National phase application under 35 USC 371 Use Form PTO-1390. This form can be found on the USPTO website. It is self-explanatory. An example is provided below.
The top part of the form should be filled out with all the required application information, including docket number, US application number, if known (this will probably be left blank), priority date claimed, title of the invention, and applicant name(s). Remember that the priority date claimed is the date of the original first-filed application, not the date of the PCT application (if these are different). The body of the form contains a number of boxes. Here are some notes concerning filling out the rest of the form: Box 1: � This is an express request to begin national examination procedures.… - Since this is probably the first national application submission under 35 USC 371, this box is generally checked. Box 2: � A copy of the International Application (35 U.S.C. 371(c)(2)) is attached hereto (not required if the International Application was previously communicated by the International Bureau or was filed in the United States Receiving Office (RO/US)).
- This box will not be checked if you filed the PCT in the USPTO as the receiving Office. When in doubt, though, check it and send a copy of the published PCT application. It can never do any harm. Box 3: � An English language translation of the International Application.… - Check if you are sending a translation. Box 4: � An oath of declaration.… - If filing the signed declarations with the application, check this box. Box 5: � Amendments to the claims under PCT Article 19. - Check this if you made Art. 19 amendments. Always send them, even if you think they have already been communicated by the IB. Box 6: � English translation of the PCT Article 19 amendment.… - Check if appropriate. Box 7: � English translation of annexes (Article 19 and/or 34 amendments only).… - Check if appropriate. Box 8a: � Do not enter the amendment made in the international phase under PCT Article 19. - Check if appropriate. Box 8b: � Do not enter the amendment made in the international phase under PCT Article 34. - Check if appropriate. Box 9: � An Information Disclosure Statement.… - Check if you are filing an IDS with the application (often filed later). Box 10: � A preliminary amendment. - Check if you are filing a preliminary amendment (you often will be). Box 11: � An Application Data Sheet under 37 CFR 1.76. - We recommended you always use an ADS (although the 371 application is an exception to the rule that you have to state priority in the ADS). Box 12: � A substitute specification. NOTE: A substitute specification cannot include claims. - Check if appropriate. Box 13: � A power of attorney and/or change of address letter. - Check if appropriate. It is usually filed with the application.
Box 14: � A computer-readable form of the sequence listing…. - Always file this if there is one in the application. Box 15: � Assignment papers. - Check if appropriate. Box 16: � Statement under 37 CFR 3.73(c) when there is an Assignee. - Check if appropriate. Box 17: � Other items or information: - This box is for other items. Give a list of all items being sent. Note that although the applicant is not required to send the USPTO copies of the ISR, Written Opinion, Article 19 and 34 amendments, or the IPRP Ch. II, it is considered good practice to send copies of all such documents unless you have already received a notice that such documents have already been transmitted to the USPTO. We also recommend always sending a copy of the published application, since it is essential for a filing date. Boxes 18- 20 to the end: Basic National Fee, Examination Fee and Search Fee - Check as appropriate. Make sure that you are using the most up-to-date fees by looking on the USPTO website. When filing the declaration later than the 30-month deadline, pay the appropriate surcharge fee. If you file the application without the signed declaration, you will receive a notice setting a deadline to file the required documents with a fee. Beware of multiple dependent claim fees. You may be filing a patent application that was originally drafted for the European Patent Office, where there is no extra charge for multiple dependent claims. If you do have one or more multiple dependent claims, there is a fairly large additional fee to pay. You will generally file a Preliminary Amendment when entering the US to get rid of any multiple dependent claims. Check the Small Entity box, if appropriate, to reduce fees by half. And if you are claiming Micro Entity status, do not forget to include form PTO/SB/15 (a) or (b). If submitting an assignment for recording, add the appropriate fee and recordation cover sheet. Then fill in the bottom section, indicating payment type (usually by deposit account) and, as always, authorizing the Commissioner to charge additional fees to the deposit account. Fill in the section that says Correspondence Address and insert the attorney/agent signature (or e-signature) and registration number. File electronically using EFS-Web (see below). Alternatively, mail the entire packet using Priority Mail Express to MAIL STOP PCT, COMMISSIONER FOR PATENTS, P.O. BOX 1450 ALEXANDRIA, VA 22313.
Once the application is received at the USPTO, it will be reviewed to determine if the applicant has included the statement that it is an application to enter the National stage under 35 USC 371. If so, it will be sent to the National Stage Processing Division, which will review it to make sure that the application is in proper condition for acceptance. If it is, the applicant will be sent Form PCT/DO/EO/903, indicating acceptance of the application as a National stage filing under 35 USC 371. Form PCT/DO/EO/903 contains a checklist of all the items that are in the application file, including those items sent directly from the IB or received during the PCT stage of prosecution. These items should include a copy of the ISR and copies of references cited in the ISR. If any additional items are needed, the applicant will receive a notice listing the items needed and giving a deadline for reply. Things to avoid (the first two are particularly critical): (a) Non-payment of the basic national fee by the 30-month date. (b) Non-submission of a copy of the International application by the 30-month date (if not already transmitted to the USPTO or filed in the RO/US - see rules above). (c) Lack of a proper oath or declaration as set forth in a Notice of Missing Requirements and failure to correct this in the required time (see rules above). (d) Lack of any required translation of the International application as set forth in the Notice of Missing Requirements and failure to correct this in the required time (see rules above). (e) Lack of any required sequence listing and failure to correct this in the required time (see rules above). An abandoned application may be revived under 37 CFR 1.137 (MPEP 711.03). Revival A 371 National phase application that has become abandoned can be revived. You can find the correct forms here: http://www.uspto.gov/patents/init_events/pct/national.jsp. These are PTO/SB/61pct: Petition for Revival of an International Application for Patent Designating the US Abandoned Unavoidably under 37 CFR 1.137(a), and PTO/SB/64pct: Petition for Revival of an International Application for Patent Designating the US Abandoned Unintentionally under 37 CFR 1.137(b).
Duty of disclosure The applicant has the duty to disclose (under 37 CFR 1.56) all known information relevant to the patentability of applications filed under 35 USC 371. This is the same duty as for a regular US application. This means you must submit a copy of the International Search Report (ISR) and copies of the references cited therein (unless they were submitted earlier or the USPTO was the ISA). Look at Form PCT/DO/EO/903 or PCT/DO/EO/905, which you should have received from the USPTO after filing the National stage application, to see if a copy of the ISR and copies of the references cited have already been received at the USPTO (they should have been). If the ISR and references have already been received, the applicant has no further duty under 37 CFR 1.56 to cite these particular references to the examiner. The examiner will indicate in the first Office Action that the references have been considered. To ensure, however, that each of the references is printed on the face of the patent, list each on an IDS form PTO/1449 or PTO/SB/08. Ch.20/B: Filing the National Phase under 35 USC 371 Using EFS-Web You will usually be filing your 371 application electronically using EFS-Web. Prepare the application documents as discussed above (ignoring steps relevant only to paper filing), sign in to the EFS-Web system, and follow the steps below. FILING CHECKLIST FOR A 371 APPLICATION Required items: -PTO-1390: Transmittal form for application under 35 USC 371 -Fees: basic fee/search fee/exam fee -Copy of the international application with figures – but usually the IB has already sent a copy to the USPTO or the USPTO was the IB, so you do not have to send it -Declaration(s) - may be submitted later Optional /as needed items: -PTO/AIA/15: General transmittal form for utility patent application -Sequence listing and statement (if you have a sequence listing) -PTO/AIA/14: Application Data Sheet (ADS) (Highly recommended) -Information Disclosure Statement (IDS) -Fee calculation sheet, if you use one -IDS references and translations, if necessary -Power(s) of attorney -Assignment(s) and recordation cover sheets -PTO/SB/15 or Micro Entity certificate, if required -Preliminary amendment, if required -Art. 19 or other amendments, if required
-English translation of specification, if required -English translation of Art. 19 or other amendments, if required -English translation of any annexes, if required -Published application (entirely optional) -International Search Report (entirely optional) -Written Opinion (entirely optional) -IB301, IB304, and IB308 (entirely optional) 1. Sign in and access the EFS-Web as usual. For a full walkthrough with images, please see Chapter 12/C. 2. Choose the practitioner under whom you are working. 3. Under Main Functions select the application type. In this case, select New application. Then select Utility. 4. Under the Utility heading, select US National Stage under 35 USC 371 and click the Continue button. Then enter the International application number and the international filing date. 5. The next screen is the Application Data screen (i) Enter the title of the invention and the docket number. (ii) The international application number and international filing date will have been imported from the previous screen. Double check that they are correct. (iii) Enter the name of the inventor. Middle name is optional. (iv) Enter the customer number, usually by using the pull-down menu. 6. Attach Documents Screen. On this screen select and attach the documents. All documents must be in .pdf (almost always) or .txt (for sequence listing). Remember that documents to be attached must be named using the proper naming convention, with no spaces. If not, tan error message will be displayed. Examples of valid file names include the following: Patent_file_001.pdf, PATFIGS1.pdf, and patfile0123456. Underneath the Files to be Submitted text box you will see the question, “Does your PDF file contain multiple documents?” If your document contains multiple sub-documents (e.g., specification, figures, and a sequence listing), select the Yes button and you will see additional boxes to fill out. Choose entries in the Category and Document Description boxes using the pull-down menus, and type in the page numbers that correspond to the document parts. The descriptions in the pull-down menus are self-explanatory. If you are unsure, select the most logical-sounding description. Double check all your documents and data at this stage. Examine the PCT application number and filing date, and inspect every single document to be uploaded.
Practice tip: We suggest naming documents starting with a number (e.g., 1_trans123, 2_pto1390, 3_ads) so that you can attach document no.1 in box 1, document no. 2 in box 2, etc. This system makes avoiding mistakes easier at this stage. 7. Upload and Validate. Once you have selected all your documents and chosen the category for each documents to be filed, click on the Upload and Validate button at the bottom of the screen. The document will be validated by the EFS-Web system, which will check it for errors. A moving bar will appear showing the progress of the upload. 8. Validation Status. Once the attached .pdf documents are validated by the EFS-Web system, you will get a message that tells you the validation status for each document. The screen will show the validation status of the document. It should say “pass” and “No validation errors found.” 9. Error messages. You will get an error message if, for example, your document is not in PDF or is not named using the correct naming format. If you get an error message, detach the document, fix the errors, and reattach the document. Then click Upload and Validate again until you get a message saying, “No validation errors found” with a blue diamond. 10. Calculating Fees. Once you have validated your documents and no errors have been found, click on the Continue button. This takes you to the Calculate Fees page. Calculate the fees on the screen. Do not forget to select the Regular/Small/Micro Entity option (in blue text). Check the fees that you need to pay. When filing a 371 you will always need to pay the Basic National Stage Fee, a Search fee (usually a report prepared and provided to USPTO), and an Exam fee. If in doubt, ask your attorney. Once you have calculated the fees click the Continue button. This will take you to the final Submit Application page. 11. Click Continue, then Submit Application. On the Submit Application page, review the application data, the fees, and the documents to be filed. As it states at the top of the page, “Submission has not been filed officially at the USPTO until the e-filer executes the Submit function and the documents are received at the USPTO Eastern Time.” If everything is correct, click the Submit button once. Alternatively, you can cancel the submission or save the document for submission later.
12. Fee payment. After submission, you will be asked if you want to pay the fees now. Click YES and you will be taken to the Financial Manager to complete the transaction. Do not forget to pre-authorize deposit account payment as a safety net.
13. Receipt. Once that application has been submitted, a screen will appear telling you that the submission has been filed and a link to an Electronic Acknowledgement Receipt will be provided. You can view, save, print, or email this receipt. You will not receive a confirmation via email that the USPTO has received your submission. Save this filing receipt. Sometime after filing, you will still receive a paper filing receipt. Remember that all patent-related documents (applications as well as follow-on documents) filed via EFS-Web are accorded the date and time of receipt in the USPTO. 14. Private PAIR. Within an hour (usually much sooner) you can access all the details of the filed 371 application using Private PAIR. 15. Filing Receipt and Notice of Acceptance. A few weeks after you file a 371 application, you should get a Filing Receipt and a Notice of Acceptance. Check all the data on the filing receipt, particularly the priority information. The Notice of Acceptance will list all of the documents received. This is important for legal (prior art) reasons, as the date of receipt of the required documents sets the 317(c) date. Read the Notice of Acceptance carefully and make sure that it includes a statement that says that the USPTO has ACCEPTED the application for national examination. Very occasionally, the Notice of Acceptance will tell you that there is a Deficiency that must be rectified. The title of the Notice will give you no hint that there are any deficiencies, and because you may have seen many of these Notices in the past with no problems indicated, it is very easy to overlook such deficiencies, and file the notice away, assuming everything is fine. So be careful to always read the Notice of Acceptance. The deficiency language in the notice, if it exists at all, might appear at the bottom of page 1 (as shown by the red arrow).
Example: Notice of Acceptance for 371 application, Deficiencies noted
Ch.20/C: The Bypass Route: An Alternative to Filing Under 35 USC 371 The bypass route is an alternative way of filing a US application claiming priority to an earlier-filed International application. The bypass application is a regular US application (filed under 35 USC 111 (a)) that claims the benefit of an earlier-filed International application that included the US as one of the designated countries (MPEP 1895 and 1896, 35 USC 365(c), and 35 USC 120).
What are the advantages to using the bypass route? - The English translation does not need to be an exact translation of the PCT.
- New matter may be added to the disclosure by filing a Continuation-in-part (CIP). - The fees under 37 CFR 1.16 may be lower, for example, where the USPTO was neither the ISA nor the IPEA. - An extension of time under 37 CFR 1.136(a) is available for payment of the fees.
What are the disadvantages of using the bypass route? - A complete application must be filed including any required formal drawings. - Certified copies of any foreign priority documents must be filed
- US restriction practice is applied instead of the broader unity of invention requirements.
Since the bypass application is a regular US application filed under 35 USC 111(a), you file it like any US nonprovisional application as previously described. Remember to use an ADS to claim priority.
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