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1893.03(c) MANUALOF PATENT EXAMINING PROCEDURE
If applicant has not forwarded a certified copy of
the priority application in time for the International
Bureau to forward it to the U.S. Designated Office
with the copy of the international application, then
applicant will have to provide a certified copy of the
priority document during the national stage to fulfill
the requirement of 37 CFR 1.55(a)(2).
PRIORITY CLAIM UNDER 35 U.S.C. 119(e), OR
120 AND 365(c)
A national stage application may include a priority
claim under 35 U.S.C. 119(e), or 120 and 365(c) to a
prior U.S. national application or under 35 U.S.C. 120
and 365(c) to a prior international application designating
the U.S. The conditions for according benefit
under 35 U.S.C. 120 are as described in MPEP §
201.07, § 201.08, and § 201.11 and are similar regardless
of whether the U.S. national application is a
national stage application filed under 35 U.S.C. 371
or a national application filed under 35 U.S.c. 111(a).
In order for a national stage application (of international
application "X") to obtain benefit under35
U.S.C. 119(e) of a prior U.S. provisional application,
the national stage application must comply with the
requirements set forth in 37 CFR 1.78(a)(4) through
37 CFR l.78(a)(6). Public Law 106-113 amended 35
U.S.C. 119(e) to eliminate the copendency requirement
for a nonprovisional application claiming benefit
of a provisional application. 35 U.S.c. 119(e)(2) as
amended became effective on November 29, 1999
and applies to provisional applications filed on or
after June 8,1995.37 CPR 1.78(a)(4) requires that the
prior provisional application must be entitled to a filing
date as set forth in 37 CPR 1.53(c), and the basic
filing fee set forth in 37CFR 1.16(k) must be paid on
the provisional application withinthe time period set
forth in 37 CPR 1.53(g). Additionally, the provisional
application must name as an inventor at least one
inventor named in the later filed international application
"X" and disclose the named inventor's invention
claimed in at least one claim of the national stage
application in the manner provided by the first paragraph
of 35 U.S.C. 112. The national stage application
must contain a reference to the provisional application
(either in an application data sheet (37 CPR 1.76) or
in the first sentence of the specification), identifying it
as a provisional application, and including the provisional
application number (series code and serial
August 2001
1800-148
number). If the provisional application was filed in a
language other than English, the national stage application
must also contain an English language translation
of the non-English language provisional
application and a statement that the translation is
accurate. The required reference to the earlier provisional
application and the English language translation
must be submitted within the time period
provided by 37 CFR 1.78(a)(5). This time period is
not extendable.
. In order for a national stage application (of international
application "X") to obtain benefit under
35 U.S.c. 120 and 365(c) of a prior filed copending
nonprovisional application or prior filed copending
international application designating the United States
of America, the national stage application must comply
with the requirements set forth in 37 CFR
l.78(a)(I) through 37 CFR l.78(a)(3). The prior nonprovisional
application or international application
must name as an inventor at least one inventor named
in the later filed international application "X" and disclose
the named inventor's invention claimed in at
least one claim of the national stage application in the
manner provided by the first paragraph of 35 U.S.c.
112. The national stage application must contain a reference
to the prior nonprovisional or international
application (either in an application data sheet
(37 CFR 1.76) or in the first sentence of the specification),
identifying it by application number (series
code and serial number) or international application
number and international filing date and indicating
the relationship of the applications. There is a nonextendable
time period for submitting the required
reference to the earlier application. If the national
stage application claims the benefit of a prior international
application designating the United States of
America, the first sentence of the specification of the
national stage application must include an indication
of whether the prior international application was
published under PCT Article 21(2) in English (regardless
of whether benefit for such an application is
claimed in the application data sheet). See 37 CFR
1.78(a)(2). The required reference to the earlier filed
application must be submitted within the time period
set forth in 37 CFR 1.78(a)(2). This time period is not
extendable.
A prior filed nonprovisional application is copending
with the national stage application if the prior U.S.