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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

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u s entry from pct application

U.S. Entry from PCT Application

111(a) Continuation vs. 371 National Stage

summary
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
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
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 d1
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
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

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