The US is one of the largest recipients of national stage entries from a PCT International Patent Application. This is due to the US being one of the largest consumers of goods and services, one of the largest manufacturers and can be a favorable jurisdiction for patent enforcement.
A national stage application becomes a US patent application, however, the filing requirements, the filing considerations and the initial thoughts can be quite different than for a conventional US patent application filing.
4 Major Requirements of a 371 National Stage Patent Application
The national stage deadline is 30 months from the initial priority date of the PCT International Application.
If the 30 month deadline has been missed, it may still be possible to file a US national stage application as long as certain requirements are met, and, the delay in filing was unintentional.
At the time of filing, the requirements for a national stage application are slightly different. As many patent attorneys view such a filing, let’s first consider what must be submitted in order to be granted a filing date by the USPTO. This would be considered the essentials, must have items.
The basic national stage fee must be submitted initially in order to be granted a filing date. It is typically recommended to pay all the anticipated filing fees at the time of filing of the national stage to avoid misapplication of fees or other fee related issues;
An indication of small entity is required to determine the basic national stage fee;
The name and address of the inventors (and of the Applicant);
In some instances, a copy of the PCT application. For example, if the PCT international application has not yet published, then a copy may be required. It is generally recommended that ALL National Stage patent applications be filed with a copy of the PCT International Application, either as filed with the PCT, or as published in the PCT.
All of the remaining requirements can be submitted after filing, if there is not sufficient time prior to the filing of the National Stage Application. For an additional fee, the signed inventor declarations can be submitted after filing, the English translation of the application and any amendments made in the International Phase can be submitted after filing, as can prior art submitted along with an Information Disclosure Statement. The USPTO will send a notification as to the missing requirements and a deadline will be set to supply these requirements (with extensions of time available if further time is needed in order to supply the requirements.
Initial National Stage Filing Strategies
The first strategy to consider for any filing is whether or not to provide a preliminary amendment. There are several reasons why the filing of a preliminary amendment can reduce costs and streamline the examination process.
First, it is helpful to eliminate multiple dependent claims. In many instances, a PCT International application may include multiple dependent claims. Multiple dependent claims are dependent claims that refer to more than one claim. Initial multiple dependent claims, while allowed in the US, are highly discouraged by the USPTO, through the application of very high additional fees for a multiple dependent claim.
Additionally, many countries allow a multiple dependent claim to depend from another dependent claim. Such a double multiple dependency is not allowed under US practice. Therefore, such claims will require amendment.
Therefore, to reduce filing fees, it can be highly advantageous to eliminate multiple dependent claims from a national stage patent application by way of a preliminary amendment, contemporaneous with filing and paying the filing fees.
Reduce Number of Claims
Second, and also to reduce filing fees, as the US charges rather large fees for total claims that exceed 20 and total independent claims that exceed 3, it may also be advantageous to amend the claims so that there are 20 total claims or fewer, and a total of 3 independent claims or fewer. As is often the case, claims are amended, deleted, and added during prosecution.
Third, a common rejection can be tied to the length of the abstract, or the use of foreign language text in figures, appendices or the like. Shortening the abstract through a preliminary amendment and submitting substitute drawings with non-English text removed can also streamline the process.
Advanced filing strategies – Patent Prosecution Highway (PPH)
It may be possible to expedite the examination process in the US by taking advantage of earlier searches and opinions on the PCT International application or the underlying Priority Application. The Patent Prosecution Highway (PPH) is a cooperative program between the USPTO and a number of foreign patent offices, which includes over two dozen patent offices in addition to the IP5 (Japan, Korea, EPO, China in addition to the US). These other patent offices include the Global PPH countries, namely, Australia, Austria, Canada, Chile, Colombia, Denmark, Estonia, Finland, Germany, Hungary, Iceland, Israel, Japan, Korea, New Zealand, Nordic Patent Institute (Denmark, Iceland, Norway), Norway, peru, Poland, Portugal, Russia, Singapore, Spain, Sweden, UK and Visegrad Patent Institute (cooperation between Czech Republic, Hungary, Poland, and Slovakia). Finally, bilateral agreements exist with Brazil, the Eurasian Patent Office, Mexico, Nicaragua, Philippines, Romania, Saudi Arabia, and Taiwan.
If a favorable opinion has been received in a participating patent office, then a “petition to make special” can be filed before substantive examination begins in the US. Most often, the PPH petition is filed at the time of filing.
To achieve the granting of the PPH petition, the claims in the national stage application must sufficiently correspond to the claims that received favorable opinions from the foreign patent office. Additionally, the petition requires the Applicant to provide the correlation between the national stage claims and the claims that received a favorable opinion. Plus, the opinion itself must be provided.
Typically, the USPTO decides whether to grant the PPH petition within two months. If it is granted, the time to the first substantive office action from the USPTO is reduced from the typical 14-28 month time period to about 2-5 months. This can result in substantial expediting of the patent application.
There are limitations to the PPH procedure, so it may not be right for every application. For example, in certain instances, the PPH may preclude the obtaining of broader claims than those allowed by other patent offices. So, it may be desirable to forgo the PPH if it is felt that broader claims than those allowed in the foreign patent office can be obtained in the US.
A hybrid procedure can be adopted, where a PPH is pursued, and, at some point during the prosecution of the national stage application, a continuation can be filed to pursue different claims, or broader claims. In such a manner, one can take advantage of the PPH for purposes of expediting, while still pursuing broader claims.
Advanced Filing Strategies – National Stage Application vs. a “continuation” of a PCT
In the US, a PCT international application can be filed as a national stage application in the USPTO. However, unlike many foreign countries, in the US, a PCT International application can be filed as a “continuation” of the PCT application, using the conventional “continuation” practice in the United States. This is often referred to as a “bypass”, “continuation” or “direct” national stage application.
There are different requirements for such an application and different treatments of these applications during prosecution. While beyond the scope of this article, in certain circumstances it may be advantageous to file the application not as a national stage, but as a “continuation”.
One such instance can be where signatures are difficult to obtain, and, the timing of submissions of signed documents is different whether the application is filed as a national stage or as a “continuation”.
Additionally, it the PPH is not a possibility, but expedited consideration is desired, while a national stage cannot be expedited through a Track I Prioritized Examination, it is possible to file a Track I request if the PCT International application is filed as a “continuation”.