How to prepare for a US national phase application
Almost every PCT application is filed with the US national phase in mind. Even if a PCT applicant ultimately chooses not to enter the US, foreign IP firms will be greatly helped by understanding a few key nuances of US patent practice. Knowing certain US national phase strategies upfront can streamline a foreign PCT application for entry into the US.
How should PCT claims be amended for the US national phase?
Many PCT applications originating outside the US contain multiple dependent claims. While such claims are allowed by the USPTO, we generally recommend removing multiple dependencies due to high government fees. For example, the mere presence of multiple dependent claims will incur an additional USPTO fee. As of the date of this post, that multiple dependent claim fee is $430 for a small entity and $860 for a large entity.
That’s not all. There will likely be excess claim fees once the final count is tallied. Multiple dependent claims are counted a certain way by the USPTO that can easily lead to well over 20 total claims. Imagine, for example, having 15 excess claims at a cost of $50 each for a small entity. Such US national phase filer would incur a $750 USPTO excess claim fee on top of the $430 multiple dependent claim. These USPTO fees would be in addition to the initial filing fees.
What are common PCT errors to correct for the US?
The USPTO imposes a 150 word limit on abstracts. For foreign firms that draft PCT applications, it may help to remember this fact when writing patent applications for clients interested in the US. Keep the abstract to less than 150 words and, therefore, avoid the need for an amendment.
If possible, write the PCT application with a more detailed description. US patent examiners may be tougher in rejecting claims than examiners in some foreign patent offices.
Furthermore, invest in a quality translation that will provide the proper terminology for claiming. If and when claim amendments will be required – and they most likely will – you want to have sufficient support for the language to be added to the claims.
How to save money when filing a US national stage application
If your PCT contains multiple dependent claims, have the US firm draft a Preliminary Amendment to remove the multiple dependency. This could save the client hundreds of dollars in USPTO fees.
Also, send filing orders sooner to the US national phase firm. This will enable the US patent attorney to prepare and send you inventor declarations which will need to be signed and returned. Late filings of signed inventor declarations will incur additional USPTO fees.
If there are known prior art references besides those cited in PCT search reports, disclose those references upfront. Our firm prefers to file an Information Disclosure Statement (IDS) with the initial filing. By including all known prior art references upfront, we reduce the likelihood of filing a subsequent IDS.
How to speed up your US national stage application
Was a favorable search opinion provided by the ISA during the PCT examination phase? If so, ask the US patent firm about filing a PPH request.
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