From China PCT to US national stage
Chinese companies filing US national stage applications through their PCT applications need to be aware of a few important rules to facilitate a smoother US patent process. PCT applications originating in China are originally written in Mandarin and then translated into English.
US National Stage Deadline
The US has a 30-month national stage deadline. Late national stage entry is possible by filing a petition for revival. The petition must include a statement that the entire delay was unintentional. In addition, the USPTO petition fee must be included ($1,000 for a small entity as of the date of this post).
USPTO national stage official fees
For a small entity with fewer than 500 employees, the base USPTO government fees for a US national stage application will total $830. For a large entity with 500 or more employees, the USPTO base filing fee would be $1,820. Additional USPTO fees may apply for multiple dependent claims, independent claims in excess of three, total claims in excess of 20, late filing of signed declarations, etc.
IDS: requirement to disclose known prior art
The USPTO is different from most other IP offices in the area of prior art. Anyone filing a US patent application has an ongoing duty to disclose known, material prior art by filing an Information Disclosure Statement. This obligation applies not only at the initial national entry, but throughout the prosecution of the application until grant. Our firm prefers to file the first IDS concurrently with the US national stage application if possible. An applicant who prefers to wait may submit their first IDS after the initial filing. However, waiting too long might incur USPTO fees if the submission occurs after certain events.
If the same applicant has filed multiple US patent applications involving common subject matter, we may ask whether the commonly owned patent applications are related for cross-citing purposes. If so, prior art references of record in one application should be disclosed in all other related applications.
How to avoid additional USPTO fees
You can avoid additional USPTO fees by being timely and keeping the claims within certain limits. Below are examples that can add extra USPTO fees.
Excess claims and multiple dependent claims
Additional USPTO fees may apply if the US national stage application contains any excess claims. In particular, the base USPTO filing fee covers 3 independent claims and 20 total claims.
Multiple dependent claims can greatly add to USPTO fees. The USPTO fee is $430 to keep any multiple dependent claims in the application. But, that’s not all. There is a specific way to count total claims when multiple dependency is involved that can easily add several excess claims.
To avoid these expensive USPTO fees, you can file a Preliminary Amendment to cancel excess claims and amend multiple dependencies to single dependency. A simple solution is to revise a multiple dependent claim to depend upon the earliest claim (e.g., Claim 4. The apparatus of claims 1 to 3 claim 1, further comprising . . .).
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.
Filing an accurate 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 entering US national stage
For PCT applications originating from China, making the following preparations in advance will save costs in entering the US national stage.
English Translation of Mandarin specification
The English translation should be a pure translation of the Mandarin PCT specification. No new text or numerals should be added. If a PCT applicant wishes to edit the specification, this should be accomplished with a Preliminary Amendment while the English translation remains a pure translation of the Chinese text.
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 China PCT application compared to what US national stage requires
It is common for China PCT applications to contain short specifications. Perhaps cost has something to do with skimpier descriptions. The problem with a scant specification is that it may fail to provide adequate support for the claims. This can severely the Chinese applicant when responding to Office Actions. In particular, US patent examiners will often object to proposed claim amendments on the basis of lack of 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.
How much should China PCT applicants budget for US national stage?
The question is not if an Office Action will be issued, but when and how many. China PCT applicants entering the US national stage must have a realistic expectation of the US patent process. And it is a long and expensive process. Some might call it a battle.
For example, we believe it is highly effective to have a patent attorney who is a former USPTO patent examiner on our team. That way, we can conduct more effective Examiner Interviews prior to filing the Office Action response. Speaking of interviews, the First Action Interview (FAI) program is a great strategy that can reduce the number of Office Actions.
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.