US National Stage Application: The Basics
For most applicants outside the US, the US is one of the top national phase PCT countries to be considered. This is practical guideline to help non-US applicants prepare for national stage entry into the US. Let’s begin with the basics of filing a national stage application with the USPTO based on an international PCT application.
When is the US National Stage Deadline?
The deadline to enter the US national phase is 30 months from the priority date. If the deadline has already passed, it may still be possible to file a late US national stage application if the delay was unintentional.
What are the USPTO filing fees for a national stage application?
The minimal USPTO filing fees for a national stage application amount to $790 for a small entity as of the date of this post (approximately double for a large entity with 500 employees or more). This minimum does not include additional fees that may be required, such as for excess claims, multiple dependent claims, application size, late filing of signed inventor declarations, etc. To prevent abandonment, the bare minimum that must be paid with the initial entry is the basic national stage fee which is $140 for a small entity.
US National Stage Application Checklist
Here’s a checklist of basic requirements for a US national stage application:
- copy of PCT application (required upfront if the PCT application has not yet been published)
- USPTO fees (basic national stage fee required upfront)
- whether the applicant is a small entity or large entity (required upfront)
- names and addresses of inventors and applicant (required upfront; typically available from published PCT application)
- signed inventor declarations (may be submitted after initial filing)
- any PCT amendments under Article 19 and/or Article 34 (may be submitted after initial filing)
- a signed Power of Attorney for the US representative (may be scanned; original not required)
- English translation of PCT application (may be submitted after initial filing)
- English translation of any amendments (may be submitted after initial filing)
- prior art information for filing an Information Disclosure Statement (may be submitted after initial filing)
According to MPEP 1893, a copy of the published PCT application is not required for filing US national stage application if the international application was previously communicated by the International Bureau or was filed in the US Receiving Office: “Pursuant to PCT Rule 93bis(b), the publication of the international application by the International Bureau (and the resulting availability of the published application in a digital library) is considered to effect the required communication of the copy of the international application to the U.S. Designated or Elected Office. Thus, publication of an international application by the International Bureau within 30 months from the priority date is considered to satisfy the requirement of 37 CFR 1.495(b).”
US National Stage Entry from Foreign PCT Application
PCT Application in non-English Language
If the PCT application was filed in a foreign patent office with a non-English specification, an English translation must be filed in the US national stage application. To avoid a surcharge under 37 CFR § 1.492(i) ($70 for a small entity as of post date), an English translation of the international application should be included with the initial filing.
If an applicant does not have enough time to provide an English translation by the 30-month national stage deadline, a copy of the PCT application may be initially filed. Shortly after the national stage entry, the applicant will receive a Notification of Missing Requirements under 35 USC § 371 setting forth a 2-month deadline (or 32 months from priority date, whichever is later) for submitting an English translation of the international application.
Multiple Dependent Claims
If the PCT application contains multiple dependent claims, an initial determination should be made as to whether the multiple dependent claims are in proper format, namely, that no multiple dependent claim depends upon another multiple dependent claim. If the international application contains improper multiple dependent claims, those claims must eventually be amended or deleted.
Proper multiple dependent claims may be kept in a US national stage application, but doing so will incur at least a USPTO multiple dependent claim fee of $430 for a small entity, plus fees for any excess claims above 20 that may result from a final count. Therefore, a business decision should be made before the initial filing as to whether or not to keep proper multiple dependent claims.
Saving USPTO Government Fees by Filing a Preliminary Amendment
Foreign PCT applications tend to have a number of issues best resolved by filing a Preliminary Amendment concurrently with the initial filing or shortly after entry into the US. Avoiding the USPTO multiple dependent claim fee ($860/$430 for large/small entity) and any excess claims fees ($480/$240 for each independent claim in excess of three; $100/$50 for each claim in excess of 20) may alone justify filing a Preliminary Amendment.
Other factors that may warrant a Preliminary Amendment may include:
- Figures that contain unclear drawings or non-English text
- Multiple dependent claims
- Abstract exceeding 150 words
- Total claims in excess of 20
- Independent claims in excess of 3
National Stage Entry from US PCT Application
If your PCT application was filed with the USPTO, you have the option of filing a national stage application in the US. Chances are that you may have already filed a US non-provisional application and the PCT application was filed to reserve your rights to file in foreign countries. Nonetheless, you also have the option of filing another non-provisional in the US by way of national stage entry. Therefore, think of this option as a continuing application to pursue claims different than those that may exist in a co-pending US application.
Should a PPH request be filed?
If the PCT applicant received a prior favorable ruling on the claims, it may be worthwhile to explore the cost of amending the claims, if necessary, and filing a PPH request to streamline the examination of the US application claims.
Though the PPH request need not be filed concurrently with the initial filing, the request should be filed promptly after entering the US national phase to avoid being too late (e.g., after receiving a substantive Office Action).
Can a request for Track One Prioritized Examination be filed with US national stage entry?
No, a request for Track One Prioritized Examination is not available in a US national stage application. Accordingly, a PCT applicant has the following options if Track One is desired:
- File a bypass continuation with a Track One request; or
- File a US national stage application first without Track One, and then file a continuing application with a Track One request. This option of filing a later continuing application with Track One may appeal to applicants who have already entered the US national phase. Filing multiple US applications may also make sense to applicants desiring simultaneous examinations of different claim sets.
Keep in mind that a certified copy of the foreign priority application must be timely filed in a bypass continuation.
Do you want to file a First Action Interview (FAI) program request?
The First Action Interview program has several advantages. Consider filing an FAI request before the first Office Action on the merits.