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§111 vs. §371 USA Prosecution

§111 vs. §371 USA Prosecution. Salvatore A. Sidoti Advanced PCT Seminar July 2005. 111 vs. 371 Prosecution in the US. All international applications filed on or after January 1, 2004 automatically include a designation of the Unites States of America. 111 vs. 371 Prosecution in the US.

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§111 vs. §371 USA Prosecution

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  1. §111 vs. §371 USA Prosecution Salvatore A. Sidoti Advanced PCT Seminar July 2005

  2. 111 vs. 371 Prosecution in the US • All international applications filed on or after January 1, 2004 automatically include a designation of the Unites States of America.

  3. 111 vs. 371 Prosecution in the US • Many of us file a US priority application and a corresponding international application via the PCT. • The option exists to enter the national phase in the US under 35 USC 371. • The result is that one can have two applications pending before the USPTO at the same time.

  4. 111 vs. 371 Prosecution in the US • Unity of Invention • With 111 prosecution, the application is subject to US restriction practice. • With 371 prosecution, the national stage application is subject to broader PCT unity of invention standard.

  5. 111 vs. 371 Prosecution in the US • Unity of Invention • An advantage of the 371 prosecution is that the Applicant may avoid having to traverse a restriction requirement, thereby avoiding potential prosecution history effects.

  6. 111 vs. 371 Prosecution in the US • Cost If the applicant already has a US priority application on file, then the applicant must pay for national stage entry (filing fee, search fee, examination fee). • Increased cost to applicant.

  7. 111 vs. 371 Prosecution in the US • Prosecution Timeliness A 371 application having the benefit of a positive IPRP drawn up by the US/IPEA will be taken out of order for prosecution on the merits.

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