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201.11(a) Filing of Continuation or Continuation-in-Part Application During Pendency of International Application Designating the United States [R-3] - 200 Types, Cross-Noting, and Status of Application
201.11(a) Filing of Continuation or Continuation-in-Part Application During Pendency of International Application Designating the United States [R-3]
It is possible to file a U.S. national application under 35 U.S.C. 111(a) and 37 CFR 1.53(b) during the pendency (prior to the abandonment) of an international application which designates the United States without completing the requirements for entering the national stage under 35 U.S.C. 371(c). See MPEP §1895. The ability to take such action is based on provisions of the United States patent law. 35 U.S.C. 363 provides that "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. 371(d) indicates that failure to timely comply with the requirements of 35 U.S.C. 371(c) "shall be regarded as abandonment by the parties thereof...". It is therefore clear that an international application which designates the United States has the effect of a pending U.S. application from the international application filing date until its abandonment as to the United States. The first sentence of 35 U.S.C. 365(c) specifically 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." The condition of 35 U.S.C. 120 relating to the time of filing requires the later application to be "filed before the patenting or abandonment of or termination of proceedings on the first application...".
DELAYED SUBMISSION OF BENEFIT CLAIM IN INTERNATIONAL APPLICATION
A petition under 37 CFR 1.78(a)(3) for accepting an unintentionally delayed benefit claim and the surcharge under 37 CFR 1.17(t) are required to add a benefit claim under 35 U.S.C. 120 >and 365(c)< in an abandoned international application >designating the United States< filed on or after November 29, 2000, even when the international application did not enter the national stage under 35 U.S.C. 371. For example, when filing a "bypass" continuation application under 35 U.S.C. 111(a) that claims the benefit of an international application >designating the United States< with a filing date on or after November 29, 2000 that could have but did not claim the benefit of an earlier U.S. application, and the benefit claim is to be added to the international application, a petition under 37 CFR 1.78(a)(3) must be filed in the international application.
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