[Patentpractice] Understanding the similarities and differences between U.S. § 120 benefit vs. Paris Convention Art. 4 priority vs. § 371 national phase

[David Boundy]

A couple questions recently reflect a lack of clear understanding of the
similarities and differences between three different things.  From time to
time, I post this table (and I ask Carl and Rick N to look at it closely
and debug it if there's anything wrong).  Here is the February 2024
reminder (with a few updates).

U.S. § 120 benefit is a completely different thing than Paris Convention
Art. 4 priority.  And § 371 national phase entry is a third entirely
different thing from either.  They serve different purposes, and the public
policy tradeoffs are different.   That leads to rules that are completely
different.  It isn't a difference of degree; it's conceptual and cultural
incompatibility.  The things that matter are completely different.  They
are as different as written description vs. enablement—you cannot transfer
what you know about one to the context of the other:

*Benefit under U.S. § 120 (either U.S.-to-U.S. or a US-to-PCT bypass)*

*Priority under Paris Convention Art. 4*

*U.S. National Phase entry (not a new application) under § 371 (non-bypass)*



Continuity of pendency.  That can last up to 20 years.

Twelve months from the earliest application (Art. 4(C)(2), with the
qualifications of Art. 4(C)(4)), “whatever may be the subsequent fate of
the application” (Art. 4(A)(3)).  Copendency is irrelevant.

Within 30 months of the earliest priority date.

Continuity of inventorship, overlap of at least one inventor.  Continuity
of applicant or assignee is irrelevant.

Continuity of applicant (same applicant or successor in title) (Art.
4(A)(1)).  Continuity of inventorship is irrelevant.

Continuity of applicant for any Paris Convention claims during the first
year, and continuity of inventorship from PCT international phase to U.S.
national phase.

Continuity of disclosure.

Essentially similar, subject to the daughter jurisdiction's analogs of U.S.
§ 112(a) written description and enablement (which tend to be stricter than
U.S. law)

A § 371 national phase entry is *not* a new application; it is a new serial
number for the *same* application. § 363. Because the § 371 *is* the PCT
application, this is satisfied trivially.

Continuity of priority claim, including requirement of an ADS.

Essentially the same substantively; procedure differs depending on the
procedural law of the daughter jurisdiction.

Same as for U.S. § 111(a).

Because the § 371 *is* the PCT application, this is satisfied trivially.

Day one filing requirements are the same as for a new application:
specification and drawings (which may be satisfied by “filing by reference”
under 37 C.F.R. § 1.57(a)), plus, in due course, oath/declaration, fees,
ADS, etc.

Day one filing requirements are essentially similar to column 1, plus (in
due course) certified copy

A § 371 national phase entry is more analogous to an RCE than to a new
filing.  All that’s required is a paper that identifies the PCT
application, and pay the base national phase fee.  Optionally, you can pay
the search fee and the exam fee, and include an Application Data Sheet.

No requirement for certified copy if the parent is either a U.S.
application, or a PCT filed in RO/US.  If this is a PCT bypass claiming
priority to a non-RO/US application, certified copy required.

Proactive obligation to file a certified copy within three months, even if
the daughter jurisdiction hasn’t asked for it (Art. 4(D)(3)).

Each parent follows its own rules.  For example, for a U.S. benefit parent,
or a PCT RO/US parent, you don't need a certified copy.  For a
non-US-national priority application or a PCT application not filed in
RO/US, you have a proactive obligation to file certified copy within four
months of U.S. national phase entry, or sixteen months from the “prior
foreign application,” even if the U.S. doesn’t ask for it.  37 C.F.R. §
1.55(f)(2)

A daughter application can only claim § 120 benefit from a U.S.
application, or a PCT application designating the United States.

The parent application must be “equivalent to a regular national filing
under the domestic legislation of any country” but it must be an “other
country” (Art. 4(A)(1) and (3)).  No same-country priority claims under the
Paris Convention.

A U.S. § 371 national phase entry *is *the PCT application (just with a new
serial number), and retains exactly the same priority claims as the PCT
application.

To serve as a parent to support a subsequent benefit claim, the parent must
have all filing requirements completed, including payment of fees.  E.g., §
119(e)(2).

"Any filing that is equivalent to a regular national filing" as of its
filing date may support a subsequent Paris Convention claim, "whatever may
be the subsequent fate of the application"  Art. 4(A)(2) and (3).  To
remove an earlier application as a one-year bar, it must be affirmatively
abandoned before the next application in the chain is filed.  Art. 4(C)(4).

A provisional for which fees were never paid can serve as basis for a Paris
Convention claim in any country other than the U.S.

A provisional for which fees were never paid cannot serve as basis for a
subsequent benefit claim in the U.S.




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