How does the US national stage differ from other PCT countries?

Most PCT applicants will likely consider the US as one of the potential national stage entries. It makes sense since the US is one of the largest markets for a host of products and services where technology is involved. National stage entry, however, is not universal. Every PCT country has its specific rules regarding national phase entry. Furthermore, patent prosecution occurring after the initial filing will vary by each governmental patent office. Some IP offices may present a more challenging patent examination process than others. For any PCT applicant considering the USPTO, let’s take a look at how the US national phase different from other national phase filings.

Is the US national stage deadline extendable?

Whereas certain PCT countries offer some leniency in filing a late national stage application, the US has a non-extendable 30-month deadline. If you are past the 30-month national stage deadline, the USPTO does offer a petition for revival for late national stage entry if the entire delay was unintentional. A high petition fee must be added to the normal national stage filing fees.

Do US national stage applications require a subsequent request for examination?

Many PCT countries have a two-step process for filing utility patent applications:

  1. initial national stage entry; and
  2. request for examination.

Depending upon the country, the deadline for the second step of requesting examination may be months or years after the national stage deadline. This gives applicants the luxury of holding off examination in a particular country until more favorable conditions occur, such as increased funding or favorable results in a counterpart patent application in a different country.

The USPTO does not have or even offer a second step of a request for examination. However, there are practical ways to delay examination, such as submitting certain documents late.

Do you have to tell the USPTO about known prior art?

Some countries do not require applicants to inform their patent office about any prior art relevant to their patent applications. The USPTO is unique in that it requires every patent applicant to disclose known and relevant prior art. Initially, this obligation is satisfied by filing an Information Disclosure Statement (IDS) with the initial national stage filing or promptly thereafter. But the duty to disclose does not stop there. Every USPTO patent applicant has ongoing duty that ends only with an issued patent. So, a PCT applicant considering the US should expect ongoing costs of filing multiple Information Disclosure Statements due to prior art uncovered in any related applications, whether in the US or in foreign countries.

What are the chances of your US national stage patent application getting rejected?

“Expect the worst, and hope for the best” would be a fitting motto for US patent prosecution. There is over a 90% chance of a first rejection. After responding to the first Office Action on the merits, there is a 50% chance of getting a second rejection. So, it would be fairly common for a US utility patent application to encounter multiple rejections.

A second rejection is typically a Final Office Action that will likely require additional government fees to be submitted with a Request for Continued Examination (RCE) to be filed in conjunction with an Office Action response. In certain cases, additional government fees might be avoided if the Examiner is willing to consider an after-final reply known as an AFCP response. An Examiner Interview may helpful in determining whether an AFCP response would be appropriate as well as in gauging the success of potential claim amendments and arguments.

Are there ways to speed up or streamline patent examination?

PPH is an option with US national stage applications. However, the results of a PPH request appear mixed.

If an inventor is 65 years old or more, a petition to make special based on the inventor’s age may be filed to move the application to the front of the line. This petition speeds up the timeframe for the first Office Action on the merits which might otherwise take one to two years, or more.

If an applicant is willing to pay a high price for more speedy examination, a Track One request for prioritized examination may be filed.

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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