What should PCT applicants look for in a US national phase firm?

When it comes to entering the US national phase, PCT applicants have a lot of options. Should you go with a big firm or small firm? Can a boutique IP firm handle US patent filings for a large client? How can you tell if a US national phase firm has experience with issues specific to PCT and national stages?

Will the US national phase firm warn you of potential problems in your PCT application?

We see plenty of common problems in PCT applications. Though they are not exactly errors, they can cause undesirable costs and delays in the US national stage. For example, multiple dependent claims can greatly increase USPTO fees.

Some issues arise due to different limitations by foreign patent offices. For example, the USPTO imposes a 150 word limit on abstracts which may be lower than foreign patent office requirements.

Furthermore, the standard USPTO initial government fees will cover a total of 20 claims, of which 3 can be independent. We sometimes advise foreign firms and clients to reduce the number of claims to minimize excess claim fees which can be significant.

Should your title be amended to conform to US practice? Are there any issues with your inventor declarations or assignments?

Is the US patent law firm familiar with PCT nuances?

What is the difference between theory and reality in US patent law practice? I would argue experience. For example, the USPTO is supposed to consider Article 34 Amendments filed during the Chapter II examination of the PCT application. When a copy of the Article 34 Amendment is submitted with the US national stage filing and all appropriate boxes are checked, there is no excuse for the USPTO to ignore the amendment. And yet they do. All the time.

So, what has experience taught us? Our firm prefers to file a Preliminary Amendment incorporating the Article 34 Amendments. It might cost the client a nominal bump in fees, but it will save a great deal of delay and additional costs later on. Moreover, filing a Preliminary Amendment upfront saves you from having to double-check if the USPTO actually examined the amended claims or an older version.

If your signed inventor declarations will be late, will the US patent firm warn you about submitting them before filing a Request for Continued Examination (RCE)?

Do you need to expedite your US patent application?

Some options to streamline a US national stage application can be filed, such as PPH. A PPH request, however, might not significantly bump up the wait time for the first Office Action.

If you wish to shorten the timing for the initial examiner review, you should consider a Track One request which does have a high government fee. What are your options since Track One requests are not available for US national phase applications? Consider filing a US bypass application so that you can request Track One which must be submitted with the initial filing.

Do you have to disclose known prior art to the USPTO?

Yes, you have an ongoing duty to disclose known prior art to the USPTO throughout the life of the US patent application until grant. If and when new prior art references arise in Office Actions of foreign counterpart applications, you must promptly inform your US patent firm so that they can file a timely Information Disclosure Statement (IDS).

How will the US patent firm respond to Office Actions?

Sometimes, a difficult patent examiner will require more convincing. That’s why it helps to have a former USPTO examiner on the team. We take advantage of examiner interviews so that we can refine claim amendments and arguments before filing the written response.

Need an experienced US national phase firm?

Contact US patent attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623. Let’s discuss how we can help file your US national phase application properly.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys help innovators get IP that drives funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com