1893.03(b) The Filing Date of a U.S. National Stage Application [R-07.2022]

Created On
byChhabra Law Firm

An international application designating the U.S. has two stages (international and national) with the filing date being the same in both stages. Often the date of entry into the national stage is confused with the filing date. It should be borne in mind that the filing date of the international stage application is also the filing date for the national stage application. Specifically, 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.

Similarly, PCT Article 11(3) provides that

…an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State.

National stage applications are ordinarily taken up for action based on the date of entry into the national phase. See MPEP § 1893.01 regarding entry into the national stage. Because the date of entry is dependent upon receipt of certain items required under 35 U.S.C. 371(c), this date is also referred to as the “371(c) date.” The 371(c) date, not the international filing date, is the date that appears in the “Filing or 371(c) Date” box on the filing receipt and the application data sections of the Patent Data Portal and private PAIR.

The NOTICE OF ACCEPTANCE OF APPLICATION UNDER 35 U.S.C. 371 AND 37 CFR 1.495 (Form PCT/DO/EO/903) indicates the 371(c) date of the national stage application. Because of changes implemented pursuant to the America Invents Act (AIA), and in particular, the ability to postpone the submission of the oath or declaration required under 35 U.S.C. 371(c)(4) under certain conditions, the requirements for entry into the national stage, and thus the determination of the 371(c) date, are different based on the international filing date of the national stage application. See MPEP § 1893.03. Form PTO/DO/EO/903 in a national stage application having an international filing date prior to September 16, 2012 identifies the 371(c) date as the date of receipt of the 35 U.S.C. 371(c)(1), (c)(2), and (c)(4) requirements, while Form PTO/DO/EO/903 in a national stage application having an international filing date on or after September 16, 2012 identifies the 371(c) date as the date of receipt of the 371(c)(1) and (c)(2) requirements. Filing receipts are mailed concurrently with the mailing of the Form PCT/DO/EO/903.

The “Date of Completion of all 35 U.S.C. 371 Requirements” included on the NOTICE OF ACCEPTANCE OF APPLICATION UNDER 35 U.S.C. 371 AND 37 CFR 1.495 (Form PCT/DO/EO/903) in pre-AIA national stage applications is relevant for purposes of patent term adjustment under former 35 U.S.C. 154(b)(1)(A)(i)(II) when the Office has failed to mail at least one of a notification under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151 not later than fourteen months after the date on which the requirements under 35 U.S.C. 371 were fulfilled. This date is the latest of:

  • (A) the date of submission of the basic national fee;
  • (B) the date of submission or communication of the copy of the international application;
  • (C) the date of submission of the translation of the international application if the international application is not in the English language;
  • (D) the date of submission of an oath or declaration of the inventor in compliance with 35 U.S.C. 371(c)(4);
  • (E) the earlier of 30 months from the priority date or the date of request for early processing under 35 U.S.C. 371(f) if requested prior to 30 months from the priority date (Form PCT/DO/EO/903 will indicate the date early processing was requested);
  • (F) if a request for early processing has not been requested prior to 30 months from the priority date, the date of submission of any translation of the annexes to the international preliminary examination report if the translation of the annexes are filed within the time period set in a Notification of Missing Requirements (Form PCT/DO/EO/905) requiring either an English translation of the international application or an oath or declaration; and
  • (G) the date of submission of any surcharge for submitting the oath or declaration later than 30 months from the priority date.

The AIA Technical Corrections Act, enacted on January 14, 2013, amended 35 U.S.C. 154(b)(1)(A)(i)(II) to change “the date on which an international application fulfilled the requirements of section 371” to “the date of commencement of the national stage under section 371 in an international application.” See Public Law 112-274, 126 Stat. 2456 (2013). Thus, under the AIA Technical Corrections Act, the fourteen-month period in 35 U.S.C. 154(b)(1)(A)(i) for a national stage application is measured from the date of commencement of the national stage under 35 U.S.C. 371 in an international application.