From Korean PCT to US national phase

Korean PCT applicants seeking to file a US national phase application should be aware of key differences between the Korean Intellectual Property Office (KIPO) and the USPTO.

US National Phase Deadline

Unlike the 31-month deadline of entering S. Korea, the US has a 30-month deadline which is non-extendable. If an applicant unintentionally misses the 30-month deadline, then late entry into the US national phase is available with the payment of a hefty penalty and a signed statement that the entire delay was unintentional.

English translation of Korean specification

PCT applications originating from S. Korea will need to be translated into English in order to enter the US national phase. The English translation is due at the 30-month national stage deadline, so it is preferable to plan ahead at least a couple of months in advance in order to have the English translation ready by then.

If an applicant is unable to submit the English translation within the 30-month deadline, a US national stage application may be initially filed without the translation. The USPTO will issue a notice requiring the translation which will set forth a 2-month deadline. Therefore, applicants will have at least 32 months from the priority date to submit an English translation.

An accurate translation may be crucial to the success of prosecuting the US application. The meaning of claim terms can make the difference in overcoming prior art rejections.

Higher Government Fees

USPTO filing fees for a national stage application are much higher than those for a South Korean national phase application. If the applicant is a for-profit company, the difference between a small entity and a large entity is whether the company has more or less than 500 employees. For a small entity such as a for-profit company with fewer than 500 employees, the initial official filing fees will generally amount to $790 (as of the date of this post). There are no government fees for making priority claims.

What documents are required?

Assuming the PCT application has been published, the documents required for a US national phase application include:

  • a signed declaration by each inventor;
  • a signed Power of Attorney for the applicant;
  • if the applicant is a company or organization, a signed assignment from each inventor to the entity (the inventor declaration and assignment may be combined into a single document that the inventor signs once); and
  • if the published PCT specification is in Korean, an English translation.

Korean claims vs. US claims

Korean claims may typically include reference numerals. While such reference numerals are not required in US claims, it is unnecessary to delete the reference numbers from the claims in the US national stage application.

The basic USPTO filing fees allow for up to 3 independent claims and 20 total claims. We generally encourage US national stage filers to take advantage of these claim limits by adding more claims in a Preliminary Amendment. Keep in mind that any new claims should generally stay within the subject matter of the PCT claims in order to minimize the probability of a Restriction Requirement.

How Korean SME and startup companies can reduce the cost of US patents

US patents are notorious for being expensive to obtain. Korean startups as well as small and midsize entities may be able to reduce costs by taking advantage of the Patent Prosecution Highway (PPH). If KIPO previously issued a favorable Office Action or allowance on any similar claims filed in the US, Korean applicants can use the earlier favorable claim ruling in the US by filing a PPH request. Both the USPTO and KIPO have a reciprocal PPH program. The PPH request may be filed after the initial national stage filing up to anytime before substantive examination by the US patent examiner begins. Keep in mind, however, that US patent examiners are not obligated to agree with the earlier favorable claim ruling although they might be persuaded by past claim decisions.

Ongoing duty to disclose known prior art

All applicants seeking US patents must disclose any known and relevant prior art. This duty applies not at the initial filing, but also throughout the prosecution of the pending application until the US application is issued or abandoned. Therefore, Korean PCT applicants with a counterpart application pending before KIPO should promptly advise their US patent attorney of any new prior art references cited by the Korean patent examiner. A supplemental Information Disclosure Statement should be filed within three months of the date of the Korean Office Action when the new prior art was first discovered.

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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.