European PCT Applicants Entering US National Phase: What You Need to Know

From Europe PCT to US national phase

Germany, UK, France, Switzerland, Sweden and the Netherlands are among the top 10 countries that use the PCT system for international patent protection. European PCT applicants who desire to enter the US national phase should keep in mind the following USPTO rules that differ from EPO patent practices. Getting it right in the beginning can save a great deal of time and costs.

30-month national phase deadline with late filing option

The US national phase deadline is 30 months from the priority date. The USPTO offers a late national phase entry that comes with a high government fee. While there is no strict deadline for a late US national stage application, the applicant must sign a form declaration stating that the entire delay was unintentional. Typically, the USPTO will not ask for further explanations regarding the delay.

Official fees depend on size of applicant

USPTO filing fees are determined by whether the applicant is a large entity or small entity. For-profit companies with 500 or more employees must pay large entity fees, while small entities may half the amount. Whenever you request a cost estimate for filing a US national phase application, always remember to identify upfront whether the applicant is a small entity or large entity.

When is the English translation due?

If the PCT application was published in a non-English language, an English translation of the specification is due at 30 months from the priority date. For last minute procrastinators, a non-English PCT application may initially enter the US national phase at the 30-month deadline without the English translation.

When the English translation is missing from the initial filing, the USPTO will eventually issue a notice requiring the missing translation which sets forth a 2-month deadline and a nominal government fee to submit the English translation. Therefore, the applicant of a non-English PCT application will have at least 32 months from the priority date to file an English translation.

US claims vs. EPO claims

Since the standard USPTO filing fees allow for up to 3 independent claims and 20 total claims, European PCT applicants should take advantage of these higher claim limits. Unlike the EPO which charges a hefty government fee for each claim in excess of 15, a European PCT applicant may want to file a Preliminary Amendment to add claims to those existing in the PCT application to take advantage of these higher claim limits.

Whereas European patents typically contain only a single claim set, European PCT applicants filing US national stage applications may want to add a couple more claim sets. Keep in mind that any new independent claims should generally be directed to the same invention in order to avoid a Restriction Requirement. For example, if the existing claims set is directed to an apparatus or device, adding a new claim set directed to a method will likely cause the US patent examiner to issue a Restriction Requirement.

The USPTO does not require the European 2-part claim format dividing the old from the new. Reference numerals in the claims are optional. It is not necessary to delete any reference numerals in the original claims of an European PCT application when entering the US national phase. In fact, reference numerals may even remain in the claims that ultimately issue into a granted US patent.

While multiple dependent claims are allowed in the US, we generally do not recommend them for several reasons. Multiple dependent claims incur high USPTO fees. Initially, the mere presence of a multiple dependent claim costs $410 for a small entity and $820 for a large entity. Then you must properly add up the total number of claims to see if total claim count exceeds 20, in which case a $100/$50 (large entity/small entity) USPTO fee is incurred for each claim in excess of 20. There is also the risk of having to amend or delete improper dependent claims where a multiple dependent claim depends upon another multiple dependent claim.

No separate examination request

Unlike most other patent offices around the world, the USPTO does not offer a 2-step examination process of first filing a patent application and then requesting examination at a later time. However, an express request to begin national examination procedures may be included with the initial filing of a complete US national stage application. To be complete, the initial national stage filing must include the required government fees, signed declarations and a translation if necessary. This express request to begin examination may make sense for early and complete US national stage submissions filed several months in advance of the 30-month deadline.

Ongoing duty to disclose known prior art

A unique burden imposed on US patent applicants is the ongoing obligation to disclose known prior art references. In a typical published PCT application where an International Search Report (ISR) plus any subsequent written opinions have already been issued, this duty to disclose can be simply satisfied at the initial national phase filing by submitting an Information Disclosure Statement (IDS) that lists all the prior art references cited during the PCT review stage.

Keep in mind that this duty to disclose known prior art is ongoing. Therefore, applicants with counterpart European applications must promptly advise their US patent attorney of any new prior art references cited by the EPO, so that a supplemental IDS may be timely filed within three months of the date the applicant first became aware of the new prior art (e.g., date of EPO official communication citing the new prior art).

PPH available

Both the EPO and USPTO are members of the IP5 Offices where the Patent Prosecution Highway (PPH) is available to applicants of both regions. A European PCT applicant with a priority application filed in Europe may have multiple opportunities to seek PPH in the US.

Avoid common US national stage mistakes

To streamline the US national phase, European applicants would greatly benefit by avoiding these common pitfalls. In many instances, we typically see mistakes in the claims or in excessively long abstracts.

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