MPEP § 1895 — MPEP § 1895
Current through: 2022-07-01

1895-A Continuation, Divisional, or Continuation- in- Part Application of a PCT Application Designating the United States 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Chapter 1800 

 Section 1895 
 

 
 
 
 
 
 1895 A Continuation, Divisional, or Continuation- in- Part
 Application of a PCT Application Designating the United States [R-07.2015]
 

 It is possible to file a U.S. national application under
 35 U.S.C.
 111(a) during the pendency (prior to the abandonment) of an
 international application which designates the United States without completing the
 requirements for entering the national stage under 35 U.S.C. 371(c) . The ability to
 take such action is based on provisions of the United States patent law.
 35 U.S.C.
 363 provides that “[a]n 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....” 35 U.S.C. 371(d) indicates that failure to timely comply with
 the requirements of 35
 U.S.C. 371(c) “shall be regarded as abandonment... by the parties
 thereof....” It is therefore clear that an international application which designates
 the United States has the effect of a pending U.S. application from the international
 application filing date until its abandonment as to the United States. The first
 sentence of 35 U.S.C.
 365(c) specifically provides that “[i]n accordance with the
 conditions and requirements of section 120 of this title,... a national
 application shall be entitled to the benefit of the filing date of a prior international
 application designating the United States.” The condition of 35 U.S.C. 120 
 relating to the time of filing requires the later application to be filed before the
 patenting or abandonment of or termination of proceedings on the first application. The
 filing of a continuation, divisional, or continuation-in-part application of a PCT
 application designating the United States is known as a “bypass” application.
 

 Continuation-in-part applications are generally filed in instances
 where applicants seek to add matter to the disclosure which is not supported by the
 disclosure of the international application as originally filed, as new matter may not
 be added to a U.S. national stage application. See 37 CFR 1.121(f) . 
 

 
 1895.01 Handling of and Considerations in the Handling of
 Continuations, Divisions, and Continuations-In-Part of PCT Applications [R-07.2022]
 

 Pursuant to 35 U.S.C. 365(c) , a regular
 national application filed under 35 U.S.C. 111(a) and
 37 CFR
 1.53(b) (not under 37 CFR 1.53(d) ) may claim
 benefit of the filing date of an international application which designates the
 United States. Thus, rather than submitting a national stage application under
 35 U.S.C.
 371 , applicant may file a continuation, divisional, or
 continuation-in-part of the international (PCT) application under 35 U.S.C.
 111(a) . Such applications are often referred to as “bypass”
 applications. 
 

 A typical time line involving a continuing application filed during
 the pendency of an international application is illustrated as follows:
 

 

 To obtain benefit under 35 U.S.C. 120 and
 365(c) of a prior international application designating the
 U.S., the continuing application must: 
 

 
 (A) include a specific reference to the prior international
 application
 

 (B) be copending with the prior international application,
 and
 

 (C) have at least one inventor in common with the prior
 international application.
 

 
 With regard to (A), if the continuing application was filed prior
 to September 16, 2012, the specific reference to the international application
 required under 35 U.S.C. 120 and 365(c) must either be contained
 in the first sentence(s) of the specification following the title or included in an
 application data sheet. See 37 CFR 1.78(d)(2) and
 37
 CFR 1.78(h) . If the continuing application was filed on or
 after September 16, 2012, the specific reference to the international application
 required under 35 U.S.C. 120 and 365(c) must be contained in an
 application data sheet. 37 CFR 1.78(d)(2) . The specific
 reference must identify the parent international application by international
 application number and international filing date and indicate the relationship of
 the applications (i.e., continuation, continuation-in-part, or division). See
 37
 CFR 1.78(d)(2) and MPEP §
 211.02 . The required reference must be submitted within
 the time period provided by 37 CFR 1.78(d)(3) . This time
 period is not extendable. A certified copy of the international application (and an
 English translation of the international application) may be required by the
 examiner to perfect the claim for benefit under 35 U.S.C.
 120 and 365(c) if the international
 application did not originate in the United States and such is necessary, for
 example, where an intervening reference is found and applied in a rejection of one
 or more claims. If the international application was published by the International
 Bureau pursuant to PCT Article 21 , then a certified copy would not normally be
 necessary.
 

 If benefit under 35 U.S.C. 119(e) , and/or under
 35 U.S.C.
 120 and 365(c) is being claimed to an
 earlier filed national application (or international application designating the
 U.S.) via an intermediate international application designating the U.S., then the
 intermediate international application must contain a specific reference to the
 earlier application, as required under 37 CFR 1.78 . The specific
 reference will usually be included on the cover page of the published international
 application and/or may appear in the first sentence(s) of the description of the
 published application. A lack of a proper reference in the published international
 application does not necessarily mean that a proper reference is not contained in
 the intermediate international application. Accordingly, the international
 application file (if the USPTO was the receiving Office) may have to be inspected to
 determine whether the requirements under 37 CFR 1.78 were satisfied
 after publication of the international application. For example, the intermediate
 international application file may contain the specific reference in a separate
 paper filed after publication but during the pendency of the international
 application, or a decision granting a petition to accept a late benefit claim may be
 present in the application file. See MPEP §
 211.04 . The examiner may contact the International Patent
 Legal Administration for assistance. 
 

 With regard to (B), a U.S. national application is considered
 copending with a prior international application designating the U.S. if the
 international application was pending on the filing date of the U.S. national
 application. Generally, except in cases where the international application has been
 withdrawn (either generally or as to the United States), an international
 application becomes abandoned as to the United States upon expiration of 30 months
 from the priority date (i.e., the priority date claimed in the international
 application or, if no priority is claimed, the international filing date) unless a
 proper submission under 35 U.S.C. 371 to enter the U.S.
 national phase is filed prior to the expiration of this 30-month period. See
 MPEP §§
 1893.01(a)(1) and 1893.02 . However, if the
 international application is one where the 20-month period from the priority date
 expired before April 1, 2002, then it was necessary to file a demand electing the
 United States prior to the expiration of 19 months from the priority date in order
 to extend the international phase to 30 months from the priority date. If such a
 demand was not timely filed, then under former 37 CFR 1.494 , such an
 international application became abandoned at the expiration of 20 months from the
 priority date unless a proper submission under 35 U.S.C. 371 to enter the U.S.
 national phase was made prior to the expiration of 20 months from the priority date.
 Accordingly, if the international application is not subject to the filing of a
 demand in order to delay entry into the U.S. national phase to 30 months from the
 priority date, then a national application filed prior to the expiration of this 30
 month period will be copending with the international application unless the
 international application was withdrawn, either generally or as to the United
 States, prior to the filing of the national application. To determine whether the
 application was withdrawn, the examiner must either review the Home Copy of the
 international application file (if the USPTO was the receiving Office), or require
 applicant to certify that the international application was not withdrawn or
 considered to be withdrawn, either generally or as to the United States, prior to
 the filing date of the national application claiming benefit under 35 U.S.C.
 120 and 365(c) to such international
 application. In order to expedite examination, applicant should certify at the time
 of filing a national application claiming benefit under 35 U.S.C.
 120 and 365(c) to an international
 application that the international application has not been withdrawn. If the
 national application claiming benefit to the international application was filed
 after the expiration of this 30-month period, then there will be no copendency in
 the absence of a timely and proper submission to enter the U.S. national phase under
 35 U.S.C.
 371 . The existence of a national stage application may be
 checked through the Patent Data Portal and the records of the national stage
 application should be consulted to verify copendency. Additionally, if the 20-month
 period from the priority date of the international application expired before April
 1, 2002 and the national application claiming benefit under 35 U.S.C.
 120 and 365(c) was filed later than 20
 months from the priority date of the international application, the applicant may be
 required to submit proof of the filing of a demand electing the United States within
 19 months from the priority date. This proof may be in the form of a copy of the
 “Notification of Receipt of Demand by Competent International Preliminary Examining
 Authority” (Form PCT/IPEA/402) showing the demand was received prior to the
 expiration of 19 months from the priority date, and a copy of the “Notification
 Concerning Elected Offices Notified of Their Election” (Form PCT/IB/332) showing the
 election of the United States. If the parent international application was not
 copending (i.e., abandoned or withdrawn), benefit under 35 U.S.C.
 120 is not possible. 
 

 With regard to (C), inventors will normally be identified on the
 cover page of the published international application. In addition, such information
 is indicated in the PCT Gazette , which is available in electronic
 form from WIPO’s website ( www.wipo.int/pct/en/official_notices ).
 

 PRIORITY CLAIMS UNDER 35 U.S.C. 119 (a)-(d) A claim for foreign priority under 35 U.S.C.
 119(a) - (d) must be made in the
 continuing application in order to obtain the benefit of the filing date of the
 prior filed foreign application. This is true regardless of whether such a claim
 was made in the parent international application. A foreign priority claim is
 proper in the continuing application if the continuing application or the parent
 international application was filed not later than 12 months after the filing
 date of the foreign application. See 37 CFR 1.55(b) . In
 addition, a foreign priority claim is proper in the continuing application if
 the continuing application or the parent international application was filed
 after expiration of the 12 month period set forth in 37 CFR
 1.55(b) but within two months from such expiration, if
 the right of priority is restored under 37 CFR 1.55(c) . The
 required claim must be made within the time period set forth in
 37 CFR 1.55(d)(1) . This time period is not extendable.
 See MPEP § 214.01 . A certified copy of any foreign
 priority document must be provided by the applicant unless the requirements of
 37 CFR 1.55(h) or 37 CFR
 1.55(i) have been met or the parent international
 application has entered the national stage under 35 U.S.C.
 371 and the national stage application contains the
 priority document from the International Bureau. See MPEP §
 1893.03(c) . In the latter case, the applicant, in the
 continuing application, may state that the priority document is contained in the
 national stage application. 
 

 For a discussion of U.S. national applications filed under
 35 U.S.C.
 111(a) having foreign priority claims under
 35 U.S.C.
 119(a) - (d) and 365(a) to a prior
 international application designating at least one country other than the United
 States, see MPEP § 213.01 . 
 

 

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 1801-Basic Patent Cooperation Treaty (PCT) Principles 

 1802-PCT Definitions 

 1803-Reservations Under the PCT Taken by, and Notifications of Incompatibility Made by, the United States of America 

 1804-[Reserved] 

 1805-Where To File an International Application 

 1806-Applicants and Inventors 

 1807-Agent or Common Representative and General Power of Attorney 

 1808-Change in or Revocation of the Appointment of an Agent or a Common Representative 

 1809-Access to the USPTO patent electronic filing system 

 1810-Filing Date Requirements 

 1811-[Reserved] 

 1812-Elements of the International Application 

 1813 - 1816-[Reserved] 

 1817-PCT Member States 

 1818-[Reserved] 

 1819-Earlier Search 

 1820-Signature of Applicant 

 1821-The Request 

 1822-[Reserved] 

 1823-The Description 
 1823.01-Reference to Deposited Biological Material 

 1823.02-Filing Nucleotide and/or Amino Acid Sequence Listings in International Applications 

 
 

 1824-The Claims 

 1825-The Drawings 

 1826-The Abstract 

 1827-Fees 
 1827.01-Refund of International Application Fees 

 
 

 1828-Priority Claim and Document 
 1828.01-Restoration of the Right of Priority 

 1828.02-Continuation or Continuation-in-Part Indication in the Request 

 
 

 1829-[Reserved] 

 1830-International Application Transmittal Letter 

 1831-[Reserved] 

 1832-License Request for Foreign Filing Under the PCT 

 1833-[Reserved] 

 1834-Correspondence 
 1834.01-Filing of Correspondence by Facsimile 

 1834.02-Irregularities in the Mail or Electronic Communications Service 

 
 

 1835-[Reserved] 

 1836-Rectification of Obvious Mistakes 

 1837 - 1839-[Reserved] 

 1840-The International Searching Authority 
 1840.01-The European Patent Office as an International Searching Authority 

 1840.02-The Korean Intellectual Property Office as an International Searching Authority 

 1840.03-The Australian Patent Office (IP Australia) as an International Searching Authority 

 1840.04-[Reserved] 

 1840.05-The Israel Patent Office (ILPO) as an International Searching Authority 

 1840.06-The Japan Patent Office (JPO) as an International Searching Authority 

 1840.07-The Intellectual Property Office of Singapore (IPOS) as an International Searching Authority 

 
 

 1841-[Reserved] 

 1842-Basic Flow Under the PCT 

 1843-The International Search 
 1843.01-Prior Art for Chapter I Processing 

 1843.02-Certain Subject Matter Need Not Be Searched 

 1843.03-No Search Required if Claims Are Unclear 

 1843.04-Procedure for Claims Not Required To Be Searched and for Claims That Are Unclear 

 1843.05-Time Limit for Establishing the International Search Report and the Written Opinion of the International Searching Authority 

 
 

 1844-The International Search Report 
 1844.01-Preparing the International Search Report (Form PCT/ISA/210) 

 
 

 1845-Written Opinion of the International Searching Authority 
 1845.01-Preparing the Written Opinion of the International Searching Authority (Form PCT/ISA/237) 

 1845.02-Notification of Transmittal of the International Search Report and the Written Opinion of the International Searching Authority,
 or the Declaration (Form PCT/ISA/220) 

 
 

 1846 - 1847-[Reserved] 

 1848-Sequence Listings 

 1849-[Reserved] 

 1850-Unity of Invention Before the International Searching Authority 

 1851-Identification of Patent Documents 

 1852-Taking Into Account Results of Earlier Search(es) 

 1853-Amendment Under PCT Article 19 

 1854 - 1855-[Reserved] 

 1856-Supplementary International Searches 

 1857-International Publication 

 1858-[Reserved] 

 1859-Withdrawal of International Application, Designations, or Priority Claims 

 1860-International Preliminary Examination Procedure 

 1861-[Reserved] 

 1862-Agreement With the International Bureau To Serve as an International Preliminary Examining Authority 

 1863-[Reserved] 

 1864-The Demand and Preparation for Filing of Demand 
 1864.01-Amendments Filed Under PCT Article 34 

 1864.02-Applicant’s Right To File a Demand 

 1864.03-States Which May Be Elected 

 1864.04-Agent’s Right To Act 

 
 

 1865-Filing of Demand 

 1866-[Reserved] 

 1867-Preliminary Examination Fees 

 1868-Correction of Defects in the Demand 

 1869-Notification to International Bureau of Demand 

 1870-Priority Document and Translation Thereof 

 1871-Processing Amendments Filed Under Article 19 and Article 34 Prior to or at the Start of International Preliminary Examination 

 1872-Availability of the International Application File for International Preliminary Examination by the Examining Corps 

 1873-[Reserved] 

 1874-Determination if International Preliminary Examination Is Required and Possible 

 1875-Unity of Invention Before the International Preliminary Examining Authority 
 1875.01-Preparation of Invitation Concerning Unity 

 1875.02-Reply to Invitation Concerning Lack of Unity of Invention 

 
 

 1876-Notation of Errors and Informalities by the Examiner 
 1876.01-Request for Rectification and Notification of Action Thereon 

 
 

 1877-Nucleotide and/or Amino Acid Sequence Listings During the International Preliminary Examination 

 1878-Preparation of the Written Opinion of the International Preliminary Examining Authority 
 1878.01-Includes Subsections Regarding Prior Art, Novelty, Inventive Step, and Industrial Applicability for Purposes of the Written
 Opinion and the International Preliminary Examination Report 
 1878.01(a)-Prior Art for Purposes of the Written Opinion and the International Preliminary Examination Report 
 1878.01(a)(1)-Novelty for Purposes of the Written Opinion and the International Preliminary Examination Report 

 1878.01(a)(2)-Inventive Step for Purposes of the Written Opinion and the International Preliminary Examination Report 

 1878.01(a)(3)-Industrial Applicability for Purposes of the Written Opinion and the International Preliminary Examination Report 

 
 

 
 

 1878.02-Reply to the Written Opinion of the ISA or IPEA 

 
 

 1879-Preparation of the International Preliminary Examination Report 
 1879.01-Time Limit for Preparing Report 

 1879.02-Transmittal of the International Preliminary Examination Report and Related Documents 

 1879.03-Translations 

 1879.04-Confidential Nature of the Report 

 
 

 1880-Withdrawal of Demand or Election 

 1881-Receipt of Notice of Election and Preliminary Examination Report by the United States Patent and Trademark Office 

 1882 - 1892-[Reserved] 

 1893-National Stage (U.S. National Application Filed Under 35 U.S.C. 371) 
 1893.01-Commencement and Entry 
 1893.01(a)-Entry via the U.S. Designated or Elected Office 
 1893.01(a)(1)-Submissions Required by 30 Months from the Priority Date 

 1893.01(a)(2)-Article 19 Amendment (Filed With the International Bureau) 

 1893.01(a)(3)-Article 34 Amendments (Filed with the International Preliminary Examining Authority) 

 1893.01(a)(4)-Claim Amendment (Filed With the U.S. Designated or Elected Office) 

 
 

 1893.01(b)-Applicant for a U.S. National Stage Application 

 1893.01(c)-Fees 

 1893.01(d)-Translation 

 1893.01(e)-Inventor’s Oath or Declaration 

 
 

 1893.02-Abandonment 

 1893.03-Prosecution of U.S. National Stage Applications Before the Examiner 
 1893.03(a)-How To Identify That an Application Is a U.S. National Stage Application 

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

 1893.03(c)-The Priority Date, Priority Claim, and Priority Papers for a U.S. National Stage Application 

 1893.03(d)-Unity of Invention 

 1893.03(e)-Documents Received from the International Bureau and Placed in a U.S. National Stage Application File 
 1893.03(e)(1)-Title of the Invention 

 
 

 1893.03(f)-Drawings and PCT Rule 11 

 1893.03(g)-Information Disclosure Statement in a National Stage Application 

 
 

 
 

 1894-[Reserved] 

 1895-A Continuation, Divisional, or Continuation- in- Part Application of a PCT Application Designating the United States 
 1895.01-Handling of and Considerations in the Handling of Continuations, Divisions, and Continuations-In-Part of PCT Applications 

 
 

 1896-The Differences Between a National Application Filed Under 35 U.S.C. 111(a) and a National Stage Application Submitted Under
 35 U.S.C. 371 

 

 

 
 

 
 
 

 
 

 

 
 
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 Last Modified: 
 
 03/09/2026 20:49:30