Entry into the U.S. National Phase

• Author: Jay Erstling - Samson Helfgott - T. David Reed
• Pages: 149-169

149

CHAPTER 7

Entry into the U.S.

National Phase

1. General Information

A PCT application has two parts or phases. The first is the interna-

tional phase, and the second is the national phase. In the United States,

the international phase is completed by 30 months, by which time the

applicant must have entered into the national phase or the applica-

tion will become abandoned. An applicant need not wait until the 30

months, but can enter into the United States national phase before the

30 months if the applicant wants U.S. national application processing

to begin early. Additionally, to the extent that the applicant misses the

30-month deadline, there are ways to revive the application, which will

be discussed later.

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150 The Practitioner’s Guide to the PCT

1.1 National Stage and Bypass

In the United States, there are two ways to enter into the national phase.

One is by continuing the national route from the PCT application. This

will be referred to as the “national stage.”1 National stage entry is the

typical procedure that is used to enter the national phase in all of the

other PCT member countries.

However, in the United States, there is a second method of entering

the national phase that is unique to U.S. practice. This method is referred

to as the “bypass” route. This chapter will discuss both of those methods

in detail; it will explore the benefits and problems of each and analyze

the detailed routines necessary to take advantage of each method.

National Stage

Entering the national phase using the national stage route is governed

by § 371 of the U.S. Patent Act, 35 U.S.C. § 371. Under § 371, you

essentially continue prosecution of the same PCT application but as a

national application. A PCT application designating the United States is

considered a pending U.S. application under § 365(c) of the Patent Act.

Thus, while it is in the international phase, a PCT application is already

considered a pending U.S. application. Proceeding under § 371 into the

national stage is simply continuing the same application that preexisted.

Bypass

On the other hand, using the bypass route, you essentially are filing a

separate and new continuation application of the pending PCT appli-

cation. Because a PCT application during the international phase is a

pending U.S. application, under § 120 of the Patent Act, you can file

a continuation application at any time during the life of that pending

U.S. application. The bypass is essentially the filing of a new application

under 35 U.S.C. § 111(a), as a continuation application claiming the

benefit of the PCT application under § 120. While the continuation or

bypass application benefits from the earlier priority date, it is essentially

a brand new application.

1. Pursuant to U.S. Patent Act, 35 U.S.C. § 371, entering the national phase in the

United States is referred to as entering the “national stage.”

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