Where To File an International Application

35 U.S.C. 361

Receiving Office.

(a) The Patent and Trademark Office shall act as a Receiving Office

for international applications filed by nationals or residents of the United States.

In accordance with any agreement made between the United States and another country,

the Patent and Trademark Office may also act as a Receiving Office for international

applications filed by residents or nationals of such country who are entitled to

file international applications.

*****

See

MPEP § 1806

as to who can file an

international application.

Only if at least one of the applicants is a resident or national of the

United States of America may an international application be filed in the United States

Receiving Office. See

PCT Article 9(1) and (3)

,

PCT Rules 19.1

and

19.2

,

35 U.S.C. 361(a)

and

37 CFR

1.412(a)

and

1.421

. The concepts of residence

and nationality are defined in

PCT Rule 18.1

.

International applications may be filed electronically through the USPTO

patent electronic filing system. International applications and related papers may also

be deposited with the United States Receiving Office by addressing the papers to “Mail

Stop PCT” and hand-delivering them to the Office. See

MPEP § 501

,

subsection III for information regarding hand-delivery of papers. The mailing address

for delivery by the U.S. Postal Service is: Mail Stop PCT, Commissioner for Patents,

P.O. Box 1450, Alexandria, Virginia 22313-1450. It should be noted that the Priority

Mail Express® provisions of

37 CFR 1.10

apply to the filing of

all applications and papers filed in the U.S. Patent and Trademark Office, including PCT

international applications and related papers and fees. It should be further noted,

however, that PCT international applications and papers relating to international

applications are specifically excluded from the Certificate of Mailing or Transmission

procedures under

37

CFR 1.8

. See

MPEP § 1834

, subsection III

applications and papers filed in the U.S. Patent and Trademark Office, including PCT

international applications and related papers and fees. It should be further noted,

however, that PCT international applications and papers relating to international

applications are specifically excluded from the Certificate of Mailing or Transmission

procedures under

37

CFR 1.8

. See

MPEP § 1834

, subsection III. If

37 CFR

1.8

is improperly used, the date to be accorded the paper will be

the date of actual receipt in the Office unless the receipt date falls on a Saturday,

Sunday, or federal holiday in which case the date of receipt will be the next succeeding

day which is not a Saturday, Sunday, or federal holiday (

37 CFR 1.6

).

Irrespective of the Certification practice under

37 CFR 1.8(a)

,

facsimile transmission (without the benefit of the certificate under

37 CFR 1.8(a)

)

may be used to submit certain papers in international applications. However, facsimile

transmission may not be used for the filing of an international application, the filing

of color drawings under

37 CFR 1.437

, or the filing of a

copy of the international application and the basic national fee to enter the U.S.

national stage under

35 U.S.C. 371

. See

37 CFR 1.6(d)(3)

and

(4)

,

1.8(a)(2)(i)(D)

, and

1.8(a)(2)(i)(F)

. The Demand for international preliminary

examination may be filed by facsimile transmission. See

MPEP § 1834.01

.

The United States Receiving Office and PCT Help Desk are available to

offer guidance on PCT requirements and procedures. See

MPEP § 1730

for

information on contacting the staff and other available means for obtaining

information.

WARNING

- although the United States patent law at

35 U.S.C

Demand for international preliminary

examination may be filed by facsimile transmission. See

MPEP § 1834.01

.

The United States Receiving Office and PCT Help Desk are available to

offer guidance on PCT requirements and procedures. See

MPEP § 1730

for

information on contacting the staff and other available means for obtaining

information.

WARNING

- although the United States patent law at

35 U.S.C. 21(a)

authorizes the Director to prescribe by rule that any paper or fee required to be filed

in the Patent and Trademark Office will be considered filed in the Office on the date on

which it was deposited with the United States Postal Service,

PCT Rule 20.1(a)

provides for marking the “date of actual receipt on the request.” Although the Priority

Mail Express® provisions under

37 CFR 1.10

have not been contested

to date regarding PCT applications, applicants should be aware of a possible different

interpretation by foreign authorities.

PCT Rule

19.4

provides for transmittal of an international application to

the International Bureau as Receiving Office in certain instances. For example, when the

international application is filed with the United States Receiving Office and the

language in which the international application is filed is not accepted by the United

States Receiving Office, or if the applicant does not have the requisite residence or

nationality, the application may be forwarded to the International Bureau for processing

in its capacity as a Receiving Office. See

37 CFR 1.412(c)(6)

. The Receiving

Office of the International Bureau will consider the international application to be

received as of the date accorded by the United States Receiving Office. This practice

will avoid the loss of a filing date in those instances where the United States

Receiving Office is not competent to act, but where the international application

indicates an applicant to be a national or resident of a PCT Contracting state or is in

a language accepted under

PCT Rule 12.1(a)

by the

International Bureau as a Receiving Office

rded by the United States Receiving Office. This practice

will avoid the loss of a filing date in those instances where the United States

Receiving Office is not competent to act, but where the international application

indicates an applicant to be a national or resident of a PCT Contracting state or is in

a language accepted under

PCT Rule 12.1(a)

by the

International Bureau as a Receiving Office. Where questions arise regarding residence or

nationality, i.e., the U.S. is not clearly competent, the application will be forwarded

to the International Bureau as Receiving Office. Note, where no residence or nationality

is indicated, the U.S. is not competent, and the application will be forwarded to the

International Bureau as Receiving Office so long as the necessary fee is paid. The fee

is an amount equal to the transmittal fee.

If all of the applicants are indicated to be residents and nationals of

non-PCT Contracting States,

PCT Rule 19.4

does not apply, and

the application is denied an international filing date.

Any applicant who is a resident or national of a PCT Contracting State

may also file their application directly with the International Bureau as receiving

Office. An applicant may wish to consider filing directly with the International Bureau

as receiving Office instead of the United States Receiving Office in the situation where

applicant is filing their international application after the expiration of the 12 month

priority period but within two months of the expiration of the priority period, and

where applicant desires to request restoration of the right of priority under the in

spite of due care standard. See

MPEP § 1828.01

ureau

as receiving Office instead of the United States Receiving Office in the situation where

applicant is filing their international application after the expiration of the 12 month

priority period but within two months of the expiration of the priority period, and

where applicant desires to request restoration of the right of priority under the in

spite of due care standard. See

MPEP § 1828.01

. An applicant may also

request that an application be forwarded to the International Bureau for processing in

its capacity as receiving Office in accordance with

PCT Rule 19.4(a)(iii)

in situations

where the international application was filed with the United States Receiving Office

after the expiration of the 12 month priority period but within two months of the

expiration of the priority period, and where applicant desires to request restoration of

the right of priority under the in spite of due care standard. However, any transfer

request received after substantial processing of the international application by the

United States Receiving Office has occurred may be declined.

An international application filed with, or forwarded to, the

International Bureau must have a foreign filing license unless: (1) the invention was

not made in the United States; or (2) a U.S. national application on the invention was

filed at least six months prior to the filing of the international application, the U.S.

national application is not subject to a secrecy order under

37 CFR 5.2

, and

the international application does not contain modifications, amendments, or supplements

changing the general nature of the invention in a manner that would require any

corresponding United States application to be or have been available for inspection

under

35 U.S.C.

181

. See

37 CFR 5.11

and

5.15

.

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