How to prepare a PCT application for optimal US national stage entry

PCT applications are typically filed in the country of the applicant or with International Bureau. Though an applicant may desire international patent protection, the PCT application is usually drafted by the local patent counsel in the applicant’s home country. So a PCT application will usually contain the quirks and particularities of the jurisdiction of the local patent attorney. For example, a Chinese applicant will likely have its PCT application written in Mandarin by a local China IP firm. We have seen many Mandarin specifications that tend to be short on details. A European applicant with a PCT application drafted by a European patent attorney may, for example, contain multiple dependent claims. How should a foreign applicant prepare a PCT application for entering the US national stage?

Should you eliminate multiple dependent claims and excess claims?

One common characteristic of PCT applications originating from Europe is the presence of multiple dependent claims. While multiple dependent claims are allowed in US practice, they are quite uncommon. Moreover, multiple dependent claims will incur at least a USPTO fee for the presence of even a single multiple dependent claim ($430 for a small entity as of the date of this post) plus the possibility of excess claims over 20. Therefore, you may want to remove the multiple dependency by revising the multiple dependent claims to depend on only a single prior claim.

How can you reduce USPTO patent rejections?

Every PCT application will undergo a prior art search on its claims, resulting in an International Search Report (ISR). The ISR will list relevant prior art references and summarize how the prior art would apply to the PCT claims. You should take advantage of the valuable information in the ISR to streamline your subsequent national stage applications.

A favorable ISR would indicate that many of the claims are allowable, meaning that the claims meet the three conditions of novelty (N), inventive step (IS) and industrial applicability (IA). If nearly all the PCT claims are allowable, you might consider entering the US national stage sooner with an accompanying PPH request.

In most cases, however, the ISR will typically show that many claims lack either novelty or inventive step, or both. This gives the PCT applicant an opportunity to amend claims prior to entering the national stages. Well written claim amendments can help prepare a PCT application for national stage entry in the US by avoiding the same prior art cited in the ISR. If no amendments have been filed in the PCT application, you can still file a Preliminary Amendment with the US national stage initial filing or shortly thereafter. Preliminary claim amendments will not guarantee an allowance, but you can at least save yourself an Office Action or two by starting the US national stage with more targeted claims.

How important is the English translation of the specification?

If the specification is in a foreign language, the English translation of the specification may play an important role in the prosecution of the US application. For example, suppose a prior art rejection prompts the applicant to desire claim amendments that are arguably not supported by the specification. A deeper review of the priority application in the foreign language may reveal that support is in fact provided for the desired claim amendments, but the English translation appears off. Having an accurate English translation can prepare a PCT application in a foreign language for a smoother process with the USPTO.

Can you add new matter to your PCT application?

Patent applications written outside the US vary widely in quality and quantity of words. While more words do not necessarily guarantee higher quality, we tend to find that an applicant with scant details will have more difficulty in overcoming prior art rejections. The reason is that the specification might lack support for potential claim amendments that would help get past the prior art rejections.

In such cases, applicants may consider filing a bypass CIP. Any new matter added to the CIP application will get a later priority date.

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Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and founders with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com