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1893.03 Prosecution of U.S. National Stage Applications Before the Examiner [R-2] - 1800 Patent Cooperation Treaty
1893.03 Prosecution of U.S. National Stage Applications Before the Examiner [R-2]
37 CFR 1.496 Examination of international applications in the national stage.
(a) International applications which have complied with the requirements of 35 U.S.C. 371(c) will be taken up for action based on the date on which such requirements were met. However, unless an express request for early processing has been filed under 35 U.S.C. 371(f), no action may be taken prior to one month after entry into the national stage.
(b) A national stage application filed under 35 U.S.C. 371 may have paid therein the basic national fee as set forth in § 1.492(a)(4) if it contains, or is amended to contain, at the time of entry into the national stage, only claims which have been indicated in an international preliminary examination report prepared by the United States Patent and Trademark Office as satisfying the criteria of PCT Article 33(1)-(4) as to novelty, inventive step and industrial applicability. Such national stage applications in which the basic national fee as set forth in § 1.492(a)(4) has been paid may be amended subsequent to the date of entry into the national stage only to the extent necessary to eliminate objections as to form or to cancel rejected claims. Such national stage applications in which the basic national fee as set forth in § 1.492(a)(4) has been paid will be taken up out of order.
An international application which enters the national stage will be forwarded to the appropriate Technology Center (TC) for examination in turn based on the 35 U.S.C. 371(c) date of the application. As set forth in 37 CFR 1.496(b), if an application includes only claims which have been indicated in an IPER prepared by the USPTO to satisfy the criteria of PCT Article 33(1)-(4), the application qualifies for the reduced basic national fee set forth in 37 CFR 1.492(a)(4). Applications in which the reduced basic national fee has been paid will be taken up out of order by the examiner. See MPEP § 708 for a discussion of the order of examination of applications by examiners.
Once the national stage application has been taken up by the examiner, prosecution proceeds in the same manner as for a domestic application with the exceptions that:
(A) the international filing date is the date to keep in mind when searching the prior art; and
(B) unity of invention proceeds as under 37 CFR 1.475.
>In addition, the International Publication Number and the Publication Date MUST be in the national stage application if the application is allowed. The International Publication Number and the Publication date can be found in the WIPO Publication block on the DO/US Worksheet. If the Publication Number and the Publication date are not found on the worksheet or if the worksheet is missing, the information may be taken either from the International Publication or the PCT Gazette page. The examiner should ensure that the International Publication Number and the Publication date are in one of these three locations before the application is sent to Office of Patent Publication.<
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