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Blocking Competitors by PCT Continuation Applications

The following article provides information on the Patent Cooperation Treaty (PCT), answering questions about the procedure allowing for international patent application.

Will the procedure be advantageous only to those who file international applications in English?

No. Regardless of the language of the international application (IA) it may be filed as a continuation in that language. If that language is not English, the PTO will require an English language translation within two months of the filing date of the continuation or one month from the PTO notice requiring the translation, whichever is later.

After filing the IA continuation, when will the PCT national stage need to be entered?

Never. The IA continuation is a regularly filed national application under 35 USC 111(a) and will proceed through the PTO to issue in the usual manner for a regular application.

Does the MPEP provide for filing IA continuations?

Yes, in §§ 201.11(a), 1895, 1895.01 and 1896.

Is the table in MPEP 1896 incorrect?

In its upcoming revision, the PTO is clarifying the table to make it clear that a patent granted on an IA continuation will have a § 102(e) date as of its IA filing date.

Why does the filing of an IA continuation cost less than the filing of a national phase application?

The statute sets the basic filing fees under § 111(a) for a regular application (e.g., a continuation at $730) and under § 371 for a PCT national phase application at $980 (or $850 if the international search report was issued by the EPO or JPO).

Why is the filing of an IA continuation not in effect the filing of a national phase application?

A PCT national phase application must be filed under § 371 and comply with all of its requirements including the payment of the basic filing fee required for national phase applications. An IA continuation is not filed under § 371 but under § 111(a) as a regular application with a lower basic filing fee. Therefore, an IA continuation will not be considered a national phase application by the PTO.

What is the statutory basis for IA continuations?

35 USC 365(c) provides that "In accordance with the conditions and requirements of Section 120 of this title, ... a national application shall be entitled to the benefit of the filing date of a prior international application designating the United States." Section 120 provides for the benefit of an earlier US filing date. Section 363 provides that such an earlier US filing date is the date of the international filing except as otherwise provided in § 102(e).

Why is the exception in § 363 not operative to prevent IA continuations from having a § 102(e) date as of the IA filing date?

Section 102(e) has two parts, a general part and an exception part, as above described. Section 363 refers to the exception in § 102(e), i.e., that the date a national phase application complies with the national stage entry under § 371(c)(1), (2) and (4) is its § 102(e) date. An IA continuation does not comply with § 371 because it is not filed under that section but § 111(a) as a regular application and because the filing fee required by § 371(c)(1) is higher than the required IA continuation filing fee and is hence not paid. Therefore, an IA continuation comes under the general part of § 102(e) and not under the exception thereof.

Relative to the Hilmer doctrine, how can you rationalize an § 102(e) date for a IA continuation as the IA filing date?

While the second part of § 102(e) incorporates the Hilmer doctrine (In re Hilmer, 149 USPQ 480, CCPA) and thereby prevents a national phase application from benefiting from the international filing date for prior art reference purposes, nothing in the statute prevents that for IA continuations which were contemplated from the very earliest PCT sections in the statute (see 7 above). Had Congress intended to apply the Hilmer doctrine to IA continuations, too, it certainly could have done so very readily but it did not.

Does filing an IA continuation circumvent the § 371 provision of § 102(e)?

In a way, yes, but a valid way, per above answers.

Does § 102(e) fail to reflect the intentions of Congress for IA continuations?

No. IA continuations were contemplated by § 365(c) (see 7 above) and were not overlooked.

Will declarations be "stale" if executed contemporaneously with the PCT international filing, in national phase applications? in IA continuations?

No. Declarations executed more than 3 months before the U.S. filing date are no longer considered "stale" by the PTO (MPEP 602.05 is being revised in this regard).

Will patents granted on IA continuations have a 17 year term or a 20 year term?

IA continuations filed after June 7, 1995 will have a 20 year term measured from the IA date. Based on an IA filed after that date, a patent granted on a national phase application will also have a 20 year term measured from the IA date. If the IA were filed before June 8, 1995, the resultant national phase patent will likewise have that same 20 year term unless 17 years from grant expires later.

When priority documents are filed in the international stage, why is it required to file them in IA continuations when they are not required in national phase applications?

An IA continuation is filed as a regular US application under § 111(a) and like all regular US applications any foreign priority can only be perfected if claimed and the priority document (certified copy of foreign application, not PCT application) is filed. Non-filing of priority documents in the national phase stage is only possible because of provisions in the PCT itself, and an IA continuation is not a filing under the PCT.

What is the difference in the division requirements in national phase applications and IA continuations?

There are two standards in the US for division (restriction) practice: (1) regular US practice under Rules 141-146 and MPEP 802-803.02 and 809.01(a) and (2) national phase practice under Rule 475 and MPEP 1893(d). The latter is based on the required PCT "unity of invention" approach which is "fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features". Regular US practice may arrive at the same end point but requires inventions to be "independent and distinct" before they can be properly restricted.

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