U.S. Entry from PCT Application
111(a) Continuation vs. 371 National
Stage
Summary
• The PCT CON route is recommended for U.S.
entry from a pending PCT application
• Formalities group now available for filing PCT
CON’s
Benefits of Continuation Route
• Can add new matter to CON (CIP) at filing
• CON’s receive filing receipt more quickly (1
month vs. 19 months)
• Examination Rules of CON More Familiar
– E.g., Restriction Practice vs. Unity of Invention
• Less filing paperwork required to file CON
• PTO filing default = CON
Benefits of Continuation Route Cont’d
• Even though NS application has earlier filing date,
examination won’t be ordered until 371(c)
requirements are satisfied
– For PCT Applications filed on or after 11/29/00 and that
designate US and that publish in English file date is PCT
file date
– NS applications dispatched for examination based on
371(c) date (if don’t submit declaration, then may delay
examination by 18 months)
– CON applications dispatched for examination based on
filing date (date specification, claim, and any necessary
drawing is received)
Benefits of Continuation Route Cont’d
• With CON, fees not required at filing; but can
file preliminary amendment with NS to cancel
claims
Benefits of National Stage Route
• Certified copies of priority documents not required at
filing (already submitted); however, the filing of
certified copies of priority documents is
recommended (may not be sent by WIPO)
• NS potentially has lower fee structure
– CON – basic ($300), search ($500), and exam ($200) fees
– NS – If have positive WO or IPER from US ISA/IPEA
• No Search Fee
• No Exam Fee
• Note: Still have basic fee of $300
– NS – IF US searched
• Search fee reduced ($100), otherwise $400 or $500
171-1:MAB:398407