Recognizing and Avoiding US National Phase Common Mistakes

PCT applicants entering the US national phase will benefit by understanding specific USPTO requirements and rules that may seem foreign or inconsistent with their local patent office rules. This is a brief list of common mistakes associated with filing US national stage applications. By recognizing these pitfalls before entering the US national phase, PCT applicants will reduce delay and costs.

Title of US national phase application

The following words should be avoided altogether in the title:

  • “new”
  • ‘improved,” “improvement of,” “improvement in”

The first words of the title should avoid the following articles:

  • “a” or “an”
  • “the”

An amendment to the title should be made via a Preliminary Amendment. The Application Data Sheet (ADS) should show the amended title if the Preliminary Amendment will be filed concurrently with the initial filing of the US national stage application.

Inventor Declarations

Do not change the title in the inventor declaration. It’s best to use the same title as the PCT publication for the initial filing. This avoids the needs to file a Preliminary Amendment and an ADS with a modified title. If the title must be amended, we suggest filing a Preliminary Amendment after the initial filing.

English Translations

If the PCT application was published in a non-English language, then an English translation of the published PCT application should be provided without any amendments. Any desired amendments to the specification should be made via a Preliminary Amendment with clean and marked-up substitute specifications.

If the drawings contain foreign characters, then drawings with English translations should be provided.

Claim errors originating from PCT application

Here are some common issues we see in the claims:

Improper multiple dependent claims

This is where a multiple dependent claim depends upon another multiple dependent claim, which is unacceptable. We generally recommend removing the multiple dependencies which also saves the USPTO multiple dependent claim fee ($410 for small entity).

Amended claims lacking markups

Inserted text must be underlined while deleted language must be shown as strikethrough with respect to the prior version.

Deleted claims

Do not show the entire claim as strikethrough. Instead, simply state “(canceled)” after the claim number – e.g., “2. (canceled)” – and delete all claim language following the claim number.

Renumbering claims

The original claim numbers should remain intact. If a claim is being canceled, do not renumber the following claims. For example, if Claim 2 is canceled, do not renumber Claim 3 as Claim 2 and so on.

Adding claims in the middle of an existing claim set

Do not insert new claims in the middle of the existing claims. Instead, new claims should be added after the last original claim and numbered with the next sequential number.

Is the corporate applicant a small entity or large entity?

Whenever we’re handling a US national stage application for a company, the first question we seek to determine is whether the company qualifies as a small entity or large entity. This makes a substantial difference in official fees since the USPTO fees for a large entity are twice as much as those for a small entity. And, since many of our international partners want an initial filing estimate prior to instructing us to file, knowing the entity status upfront enables us to provide accurate estimates. There is no need to pay double the USPTO fees if it can be avoided upfront.

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Vic Lin

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 entrepreneurs 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 |
Vic Lin

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