Filing Date Requirements

PCT Article 11

Filing Date and Effects of the

International Application

(1) The receiving Office shall accord as the international

filing date the date of receipt of the international application, provided

that that Office has found that, at the time of receipt:

(i) the applicant does not obviously lack, for reasons

of residence or nationality, the right to file an international

application with the receiving Office,

(ii) the international application is in the prescribed

language,

(iii) the international application contains at least the

following elements:

(a) an indication that it is intended as an

international application,

(b) the designation of at least one Contracting

State,

(c) the name of the applicant, as

prescribed,

(d) a part which on the face of it appears to be

a description

(e) a part which on the face of it appears to be

a claim or claims.

*****

35 U.S.C. 363

International application designating the United States: Effect.

[Editor Note: Applicable to any patent application

subject to the first inventor to file provisions of the America Invents Act (AIA).

See

35

U.S.C. 100 (note)

.]

An international application designating the United States shall

have the effect, from its international filing date under

article 11

of

the treaty, of a national application for patent regularly filed in the Patent and

Trademark Office.

35 U.S.C. 363

(pre-AIA) International application designating the United States:

Effect.

[Editor Note: Applicable to applications not subject

to the first inventor to file provisions of the AIA (see

35 U.S.C. 100

(note)

). See

35 U.S.C. 363

immediately above

for the law otherwise applicable.]

An international application designating the United

States shall have the effect, from its international filing date under article 11 of

the treaty, of a national application for patent regularly filed in the Patent and

Trademark Office except as otherwise provided in section

102(e)

.

37 CFR 1.431 International application requirements

.S.C. 363

immediately above

for the law otherwise applicable.]

An international application designating the United

States shall have the effect, from its international filing date under article 11 of

the treaty, of a national application for patent regularly filed in the Patent and

Trademark Office except as otherwise provided in section

102(e)

.

37 CFR 1.431 International application requirements.

[Editor Note: See

pre-AIA 37 CFR 1.431

in

Appendix R for para. (b)(3)(iii) applicable to applications filed before September

16, 2012]

(a) An international application shall contain, as specified in

the Treaty and the Regulations, a Request, a description, one or more

claims, an abstract, and one or more drawings (where required). (

PCT

Art. 3(2)

and Section

207

of the Administrative Instructions.)

(b) An international filing date will be accorded by the United

States Receiving Office, at the time of receipt of the international

application, provided that:

(1) At least one applicant (§

1.421

) is a United States resident or

national and the papers filed at the time of receipt of the

international application so indicate (

35 U.S.C.

361(a)

,

PCT Art.

11(1)(i)

).

(2) The international application is in the English

language (

35 U.S.C.

361(c)

,

PCT Art.

11(1)(ii)

).

(3) The international application contains at least the

following elements (

PCT Art.

11(1)(iii)

):

(i) An indication that it is intended as an

international application (

PCT Rule

4.2

);

(ii) The designation of at least one Contracting

State of the International Patent Cooperation Union (§

1.432

);

(iii) The name of the applicant, as prescribed

(note §§

1.421

,

1.422

,

and

1.424

);

(iv) A part which on the face of it appears to be

a description; and

(v) A part which on the face of it appears to be

a claim.

ation that it is intended as an

international application (

PCT Rule

4.2

);

(ii) The designation of at least one Contracting

State of the International Patent Cooperation Union (§

1.432

);

(iii) The name of the applicant, as prescribed

(note §§

1.421

,

1.422

,

and

1.424

);

(iv) A part which on the face of it appears to be

a description; and

(v) A part which on the face of it appears to be

a claim.

(c) Payment of the international filing fee (PCT Rule

15.2

) and the transmittal and search fees (§

1.445

) may be made in full at the time the

international application papers required by paragraph (b) of this section

are deposited or within one month thereafter. The international filing,

transmittal, and search fee payable is the international filing,

transmittal, and search fee in effect on the receipt date of the

international application. If the international filing, transmittal and

search fees are not paid within one month from the date of receipt of the

international application and prior to the sending of a notice of

deficiency, which imposes a late payment fee (§

1.445(a)(6)

), the applicant will be notified and

given a one month non-extendable time limit within which to pay the

deficient fees plus the late payment fee.

(d) If the payment needed to cover the transmittal fee, the

international filing fee, the search fee, and the late payment fee pursuant

to paragraph (c) of this section is not timely made in accordance with

PCT

Rule 16bis.1(e)

, the Receiving

Office will declare the international application withdrawn under

PCT

Article 14(3)(a)

.

THE “INTERNATIONAL FILING DATE”

An international filing date is accorded to the earliest date on

which the requirements under

PCT Article 11(1)

were

satisfied. If the requirements under

PCT Article 11(1)

are not

satisfied as of the date of initial receipt of the international application papers,

the receiving Office will invite applicant to correct the deficiency within a set

time limit. See

PCT Article 11(2)

and

PCT Rule 20.3

An international filing date is accorded to the earliest date on

which the requirements under

PCT Article 11(1)

were

satisfied. If the requirements under

PCT Article 11(1)

are not

satisfied as of the date of initial receipt of the international application papers,

the receiving Office will invite applicant to correct the deficiency within a set

time limit. See

PCT Article 11(2)

and

PCT Rule 20.3

. In such case,

the international filing date will be the date on which a timely filed correction is

received by the receiving Office. If the defect under PCT Article

11(1)

is that

the purported international application fails to contain a portion which on its face

appears to be a description or claims, and if the application, on its initial

receipt date, contained a priority claim and a proper incorporation by reference

statement, the initial receipt date may be retained as the international filing date

if the submitted correction was completely contained in the earlier application. See

PCT Rules

4.18

and

20.6

. If the defect under

PCT Article

11(1)

is not timely corrected, the receiving Office will

promptly notify the applicant that the application is not and will not be treated as

an international application. See

PCT Rule 20.4

. Where all the

sheets pertaining to the same international application are not received on the same

day by the receiving Office, in most instances, the date of receipt of the

application will be amended to reflect the date on which the last missing sheets

were received. As an amended date of receipt may cause the priority claim to be

forfeited, applicants should assure that all sheets of the application are deposited

with the receiving Office on the same day. If the application, on its initial

receipt date, contained a priority claim and a proper incorporation by reference

statement, the initial receipt date may be retained as the international filing date

if the submitted correction was completely contained in the earlier application.

Again see

PCT

Rules 4.18

and

20.6

sheets of the application are deposited

with the receiving Office on the same day. If the application, on its initial

receipt date, contained a priority claim and a proper incorporation by reference

statement, the initial receipt date may be retained as the international filing date

if the submitted correction was completely contained in the earlier application.

Again see

PCT

Rules 4.18

and

20.6

.

An all too common occurrence is that applicants will file an

international application in the U.S. Receiving Office and no applicant has a U.S.

residence or nationality. Applicants are cautioned to be sure that at least one

applicant is a resident or national of the U.S. before filing in the U.S. Receiving

Office. Where no applicant indicated on the request papers is a resident or national

of the United States, the USPTO is not a competent receiving Office for the

international application under

PCT Rule 19.1(a)

. Nonetheless,

the date the international application was filed in the USPTO will not be lost as a

filing date for the international application if at least one applicant is a

resident or national of any PCT Contracting State. Under

PCT Rule

19.4

, the USPTO will receive the application on behalf of the

International Bureau as receiving Office (

PCT Rule 19.4(a))

and, upon

payment of a fee equal to the transmittal fee, the USPTO will promptly transmit the

international application to the International Bureau under

PCT Rule

19.4(b)

. However, if all of the applicants are indicated to

be both residents and nationals of non-PCT Contracting States,

PCT Rule 19.4

does not apply, and the application is denied an international filing date.

The USPTO is also not competent to receive international

applications that are not in the English language and, upon payment of a fee equal

to the transmittal fee, the USPTO will forward such applications to the

International Bureau under

PCT Rule 19.4

provided they are

in a language accepted by the International Bureau as receiving Office

nd the application is denied an international filing date.

The USPTO is also not competent to receive international

applications that are not in the English language and, upon payment of a fee equal

to the transmittal fee, the USPTO will forward such applications to the

International Bureau under

PCT Rule 19.4

provided they are

in a language accepted by the International Bureau as receiving Office.

A discussion of

PCT Rule 19.4

is also included

in

MPEP §

1805

.

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