How to enter US national phase

Chinese PCT applicants entering the US national stage should understand a few important rules enforced by the USPTO.

Deadlines

The US has a 30-month national stage deadline. Late national stage entry is possible by filing a petition for revival containing the requisite unintentional delay statement with a petition fee ($1,000 for a small entity).

USPTO official fees

For a small entity with fewer than 500 employees, the base USPTO government fees for a US national stage application will total $790. For a large entity with 500 or more employees, the USPTO base filing fee would be $1,720.

IDS requirements

The USPTO differs from most IP offices of other countries in at least one area: the ongoing requirement to disclose known, material prior art by filing Information Disclosure Statement. This is a duty that applies not only at the initial national entry, but throughout the prosecution of the application until grant. The first IDS may be filed after the initial entry without incurring USPTO fees if the submission meets certain timing requirements.

How to avoid additional USPTO fees

The simplest way to avoid additional USPTO fees is to be on time and keep claims within certain limits.

Excess claims and multiple dependent claims

Additional USPTO fees may apply, especially if the national stage application contains any excess claims or multiple dependent claims. The base USPTO filing fee covers 3 independent claims and 20 total claims. The USPTO fee is $410 to keep any multiple dependent claims in the application.

If the PCT application contains excess claims or multiple dependent claims, these expensive USPTO fees may be avoided by filing a Preliminary Amendment to cancel excess claims and to remove any multiple dependencies. A simple way to revise multiple dependent claims would be to amend the multiple dependent to depend upon the earliest claim (e.g., Claim 4. The apparatus of claims 1 to 3 claim 1, further comprising . . .).

Late inventor declaration

Inventor declarations may be filed as late as the date of payment of the issue fee. However, there will be a USPTO late fee ($70 for a small entity). If a US national stage applicant knows that any inventor declarations will be filed late, we encourage paying the late fee upfront with the initial filing to avoid a USPTO notice triggering a two-month deadline for paying the late fee.

Late English translation

Filing an English translation with the initial entry by the 30-month date will avoid a USPTO fee for late translations.

Key issues facing PCT applicants from China

For PCT applications originating from China, making the following preparations in advance will save costs in entering the US national stage.

Translation of specification from Mandarin to English

It is best to file an English translation of the Mandarin specification with the initial filing of the US national stage application. If that is not possible, then the USPTO will issue a Notification of Missing Requirements setting forth a 2-month deadline or 32 months from the priority date, whichever is later, for filing an English translation of the PCT application.

Lack of details in PCT application

It is common for PCT applications originating from China to contain short specifications that do not provide a great amount of support for claiming features. This can hamstring the Chinese applicant when dealing with Office Actions by US patent examiners who may argue that certain claim amendments do not find sufficient support in the specification.

One possible solution is to add new subject matter by filing a continuation-in-part (CIP). If the PCT applicant already has some sense that its specification might be deficient and in need of supplementation (e.g., International Search Report already cited close prior art references), a bypass CIP application may be filed in the US in addition to, or in lieu of, the US national stage application.

Budgeting for multiple Office Action responses

The question is not if an Office Action will be issued, but when and how many more after the first non-final Office Action. US national stage applicants must have a proper expectation of a potentially long and expensive battle although there are strategies for streamlining patent prosecution.

For example, we believe it is highly effective to have a patent attorney who is a former USPTO patent examiner conduct Examiner Interviews prior to filing the Office Action response.

PPH might be an option if a prior allowance of claims was issued in an eligible PPH country.

Chinese applicants may want to seek out US patent firms that charge flat rates for ongoing prosecution and offer preliminary recommendations for responding to Office Actions.

The following two tabs change content below.
Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.
Vic Lin

Latest posts by Vic Lin (see all)