MPEP 1893.03(a)
How To Identify That an Application Is a U.S. National Stage Application

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in Januay 2018

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1893.03(a)    How To Identify That an Application Is a U.S. National Stage Application [R-08.2017]

Applicant’s initial submission under 35 U.S.C. 371 must be identified as a submission to enter the national stage under 35 U.S.C. 371. See 37 CFR 1.495(g). If the initial submission does not include any indication that the submission is made under 35 U.S.C. 371, the application will be treated as an application filed under 35 U.S.C. 111(a) (unless the submission is clearly identified as a submission pursuant to 35 U.S.C. 154(d)(4) for the purpose of obtaining provisional rights). See 37 CFR 1.417. Thus, if applicant wishes the application to be treated as a filing under 35 U.S.C. 111(a), the originally filed application papers need indicate simply that the papers are for a new U.S. patent application. If, however, applicant is submitting papers for entry into the national stage of a PCT application, or to establish an effective date for provisional rights resulting from the filing of a PCT application under 35 U.S.C. 154(d), applicant must so state.

When filing an application via EFS-Web, the EFS-Web screen prompts applicant for the type of filing being made, e.g., "nonprovisional application under 35 U.S.C. 111(a) " or "U.S. National Stage Under 35 U.S.C. 371." Identifying the type of filing as a national stage submission under 35 U.S.C. 371 on this screen will serve to identify the submission as a national stage submission under 35 U.S.C. 371. Applicants seeking to enter the national stage are also advised to use transmittal Form PTO-1390, as this form clearly indicates that the submission is under 35 U.S.C. 371. The inclusion with the initial application submission of an inventor’s oath or declaration identifying the international application by international application number as the application to which the oath or declaration is directed is considered an indication that the application was submitted under 35 U.S.C. 371. However, claiming priority of an international application in an oath or declaration will not serve to indicate a submission under 35 U.S.C. 371.

Examination of the original application papers occurs in the Office of Patent Application Processing (OPAP) where it is determined whether applicant has asked that the papers be treated as a submission to enter the national stage under 35 U.S.C. 371. If the application is accepted for entry into the national stage, the image file wrapper will contain a "Notification of Acceptance of Application Under 35 U.S.C. 371 and 37 CFR 1.495" (Form PCT/DO/EO/903) indicating acceptance of the application as a national stage submission under 35 U.S.C. 371. PALM records will indicate that the application is a national stage entry of the PCT application (e.g., under "Continuity Data"). Initially, the examiner should check the application file for the presence of Form PCT/DO/EO/903 and review the PALM Bib-data sheet for an indication that the application is a national stage entry (371) of the PCT application. If neither of these indications are present, in the absence of evidence to the contrary (i.e., an indication in the originally filed application papers that processing as a national stage is desired), the application may be treated as a filing under 35 U.S.C. 111(a). If both indications are present, the application should be treated as a submission under 35 U.S.C. 371.

The examiner is advised to consult the International Patent Legal Administration if he or she has any question as to whether the application should be treated under 35 U.S.C. 111(a) or 371.

   CONFLICTING INSTRUCTIONS

Where applicant’s initial submission under 35 U.S.C. 371 contains conflicting instructions as to whether the filing is under 35 U.S.C. 111(a) or 35 U.S.C. 371, the application will be treated in accordance with 37 CFR 1.495(g). Note that 37 CFR 1.495(g) in effect prior to September 16, 2012, provided that an application submission containing conflicting instructions as to treatment under 35 U.S.C. 371 or 111(a) was to be treated under 35 U.S.C. 111(a). However, 37 CFR 1.495(g) was amended with effect on September 16, 2012 to provide that conflicting indications will result in the application being treated as a national stage submission under 35 U.S.C. 371.

A conflicting instruction will be present, for example, where applicant, in the initial submission under 35 U.S.C. 371, selects "Nonprovisional Application under 35 U.S.C. 111(a) " as the utility application type when submitting the application in EFS-Web, includes a "Utility Patent Application Transmittal" (Form PTO/AIA/15 or PTO/SB/05), or includes a benefit claim under 35 U.S.C. 120 to the international application. As additional examples, a conflicting instruction will be present where applicant includes in an initial filing under 35 U.S.C. 111(a) a "Transmittal Letter To The United States Designated/Elected Office (DO/EO/US) Concerning A Submission Under 35 U.S.C. 371 " (Form PTO-1390) or an indication (for example, on the application data sheet) that the application is the national stage (or 371) of an international application.

The examiner is advised to contact the International Patent Legal Administration if he or she has any question as to whether an application has been properly treated, or should have been treated, as a national stage application under 35 U.S.C. 371.