From Japan PCT to US national phase

For Japanese PCT applicants seeking to enter the US national phase, understanding the peculiarities of US patent practice will prove to be helpful. The following guide highlights key issues involved in US patent prosecution.

Non-extendable 30-month US national stage deadline

The deadline for entering the US national phase is 30 months from the priority deadline. While this national stage deadline cannot be extended, there is a late option for a US national stage filing if the entire delay was unintentional.

No separate request for examination

The USPTO does not offer the option of a delayed examination. Nonetheless, it can still take the USPTO up to 1.5 years to 2 years (sometimes longer) from the initial filing date to review a patent application and send an Office Action.

Duty to disclose known prior art

Unlike the JPO which does not impose a duty to disclose prior art, the USPTO requires all patent applicants to disclose known prior art that is material to the patentability of the invention claimed in the US application. This duty applies to known prior art, so there is no obligation to search for prior art.

In a typical US national stage application based on a published PCT application that was searched by the JPO, there would normally be one or more search reports and/or written opinions containing a list of prior art references. These prior art references should be cited in an Information Disclosure Statement, preferably submitted with the initial national stage filing or promptly thereafter.

If a counterpart priority application is concurrently being prosecuted in Japan, any prior art cited in Office Actions by the JPO should be promptly disclosed in a supplemental IDS to the USPTO, preferably within three months of the JPO Office Action date to avoid USPTO penalty fees.

Japanese claims vs. US claims

When it comes to software and business methods, the subject matter eligibility of such claims may be more challenging to prove at the USPTO than at the JPO. Japanese PCT applicants of software patent applications should expect an uphill battle with US patent examiners. The USPTO allowance rate of business methods patents is showing some increase, but remains at relatively low levels.

Keep in mind that the basic USPTO filing fees cover up to 20 total claims and 3 independent claims. Therefore, it may be worthwhile to file a Preliminary Amendment for a PCT application containing fewer claims to add more claims. Such a Preliminary Amendment may be filed with the initial filing or sometime thereafter prior to the commencement of examination by the US patent examiner.

How Japanese startup and SME companies can reduce US patent costs

Before the US patent examiner finally gets around to reviewing your national stage application, an applicant with a favorable PCT opinion can file a Patent Prosecution Highway (PPH) request with the USPTO. If there were no favorable claim rulings during the PCT stage, an applicant with a counterpart Japanese application may see if the JPO allows any claims prior to the commencement of substantive examination by the US patent examiner.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
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