Prior to the implementation of the AIA (America Invents Act), there was a long standing debate as to whether it was better to file a National Stage US patent application, or a “continuation” of the PCT International Application, due to what was deemed prior art under 35 USC 102(e). Fast forward to today, and that section of the law no longer exists, we are now a first to file country, and, as a result, most would believe that there is no longer much of a difference between filing a National Stage patent application versus a “continuation” of the PCT International Application.
Nevertheless, several differences remain between these two alternative pathways. As a result, there are advantages and disadvantages to each approach.
Advantages of a National Stage Application
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Different rules Apply to Restriction Practice
There is often a battle to include different types of claims in a single application with the hopes that these different types of claims will all be addressed in the single proceeding. Where it is deemed that the different claims cannot be examined in the same proceeding, it is necessary to either drop these claims, or pursue these claims in one or more divisional applications.
While most patent practitioners outside of the US are aware of the Unity of Invention standard that is applied in the PCT, the US uses a restriction requirement that is, at least in practice, more difficult to contest. In a National Stage application, the Unity of Invention standard is utilized, which is advantageous to applicants.
The US standard requires that the claims are one of “independent” or “distinct from one another”. If restriction is required based on “independence” the applicant must make an admission that one of the claims is obvious over the other. This is an admission that can cause many unfortunate issues over the life of any issued patent. Second, the “distinct from one another” standard is very nebulous and vague. With the standard to appeal such a finding by the Examiner being one of “abuse of discretion”, it is very difficult to argue that the against distinctiveness.
The US standard further requires that the Examiner show that there is a serious burden if restriction is not required. Often, this can be shown when the claims would be classified in different US or international classifications. Again, traversing the Examiner (i.e., arguing against such a restriction requirement) is a very uphill battle, due to the wide latitude of the Examiner in such matters.
As a practical issue, elections under the foregoing standard are rarely made by a patent applicant.
However, under the Unity of Invention, the standard is much clearer, and, much easier to rebut. That is, the Applicant must establish that the common subject matter of the inventions is novel. Additionally, the burden is on the Examiner to identify prior art that would make the subject matter of each of the different claims anticipated. There is no admission that needs to be made by the Applicant, and the burden is on the Examiner.
In some situations, a set of claims in a National Stage may be kept together and treated in a single procedure, whereas the same claims would be subject to restriction if filed as a “continuation” application.
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Filing in the US even in the event of a Missed Deadline
If the 30 month date has been missed for filing a US National Stage, all may not be lost. For example, due to the differences between the National Stage deadlines in different countries (i.e., 30 months, 31 months, extensions in some countries and the like), it is possible for a foreign client to inadvertently and unintentionally miss the 30 month deadline.
In the US, if a National Stage deadline is missed, and, if it was missed unintentionally, there remains a mechanism by which to file a national stage application after the passage of 30 months from the priority date.
This is not possible with a “continuation” type application. Once the 30 month time has passed, a “continuation” can no longer be filed.
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Possible Lower Filing Fees
While the fees for a “continuation” have no variation regardless of how the PCT International application progressed. That is, regardless of the searching authority and regardless of the outcome of the search and opinion as to patentability, the cost for filing the “continuation” is the same.
On the other hand, in a National Stage, a portion of the fees are based upon the search authority and the results of preliminary examination while in the International Phase of the PCT. For example, if the USPTO was designated as the search authority, the cost is reduced, and further reduced if the USPTO issued a positive opinion of patentability relative to novelty, inventive step and industrial applicability.
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National Stage filing is a Common Procedure
There is also some solace to be taken by the fact that an overwhelming amount of PCT International Applications are nationalized into the US through the Nation Stage filing. Not that following the herd is the right path, however, you cannot argue with the vast number of applications filed in this manner and the successful prosecutions done under this approach.
Advantages of the “Continuation” Approach
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No risk of abandonment at the time of filing a Request For Continued Examination (RCE)
Many patent applications undergo rigorous examination and it is often necessary to file one or more RCE’s. The filing of an RCE is a routine procedure, whereby a form is completed, and an additional fee is paid to have the right to continue negotiations with the Examiner.
While this is commonplace in any patent procedure, due to a slight difference in the law, an application can actually be abandoned, or, worse yet, invalid. Specifically, a declaration signed by all of the inventors is not required until payment of the issue fee, with one exception the National Stage application. With National Stage applications, the signed declaration is required before the filing of an RCE. If this is inadvertently missed, the application will become abandoned.
This can be avoided by submitting the signed declaration documents as early as possible. If, in advance, it will be known that obtaining the signed declaration will be difficult and delayed, it may be desirable to file a “continuation”.
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New Matter can be included in a “continuation”
If there has been new matter that the Applicant would like to include when nationalizing the PCT International application in the US, there is a procedure in the US called a “continuation-ip-part”. That is, new matter can be added to the filing, which is filed just like a “continuation.” The subject matter that is in the PCT International filing will have an effective date of the priority of the international application, whereas new matter will receive the benefit of the filing date of the “continuation”.
In a National Stage, it is not possible to add any new matter.
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Filing fees can be delayed
When filing a National Stage application, one of the requirements is to pay the basic National Stage filing fee. If the fee is not paid, then the filing date will not be accorded. In a worst case scenario, the application can be abandoned. For this reason, the best practice is to pay ALL the fees at the time of filing of the National Stage application.
On the other hand, the “continuation” does not require the payment of any fees at the time of filing. In other words, in a “continuation” filing, to receive a filing date, there is no requirement to pay any fees. All of the fees can be paid at a later date. And, even then, extensions of time are available, which can even further delay the payment of fees.
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Certain forms of Expedited Review
When filing in the US based on a PCT International application, a petition to proceed under the Patent Prosecution Highway (PPH) can be filed whether filing as a National Stage or a “continuation”.
On the other hand, a Track I Prioritized Examination can only be filed if the application in the US is filed as a “continuation”. And, expediting through a Track I Prioritized Examination has many advantages over expediting under the PPH. For example, the claims in the Track I Prioritized Examination need not be the same as those filed internationally, there does not need to be a correspondence, or other relationship between the claims. Second, the expedited review generally occurs even faster than under a PPH.
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Furthermore, unlike other forms of expediting, a Track I Prioritized Examination is available to patent applications directed to any field of endeavor, and merely requires payment of an additional fee.
