When an inventor or legal representative or applicant decides to file a patent application in foreign countries, United States of America (USA) would be a first choice for filing due to the marked potential in various field as well as IP diligence. This article aims to provide the basic requirements for filing PCT national phase patent applications in the USA.The patent applications have to be filed with United States Patent and Trademark Office (USPTO). The basic requirements for filing PCT national phase patent applications in USPTO are as follows.
- Timeline for PCT national phase filings
- Documents Requirement for national phase filings
- Information Disclosure Statement
Timeline for PCT national phase filings in USA
The inventor or legal representativeor Applicant has to fulfil the requirement of thirty months deadline for PCT national phase filing in USA. The thirty months deadline is calculated from the priority date of the corresponding PCT patent application. The US national phase patent application has to be filed within 30 months from the priority date of the corresponding PCT patent application. If the 30-month deadline is missed unintentionally, the national stage can be revived by filing necessary petition and fee within two months, however, it is advisable to file the PCT national phase patent application within 30 months deadline.
Documents Requirement for national phase filings in USA
The USA national phase patent application has to be filed in English since the official language of USA patent application is English. In case, the PCT patent application is filed in any other language, the English translation thereof must be provided. The English translation can be submitted with the USPTO after filing of national phase patent application and in response to an Official Notification that will specify the period of time allowed, usually two months from the date of the notice.
The PCT patent application enters the US national stage when the applicant has filed the documents and fees required by USPTO. List of documents required to obtain the date of US national phase filing are as follows:
1. Copy of the PCT patent application, unless previously communicated by the International Bureau;
2. Executed oath or declaration of the inventor; and
3. Executed power of attorney by applicant/inventor to an attorney or agent registered to practice before the USPTO.
Information Disclosure Statement
The applicant must file an Information Disclosure Statement (IDS) with USPTO containing any information that is material to the patentability of the invention. The information can be of any type, and includes, patents, applications, publications or other information. The duty to file the IDS continues up to a patent is issued or the application is abandoned. No government fee is required to be paid for the filing of IDS, if the IDS is filed within three months from the national phase entry in the US or before the first office action.
Examination of a PCT national phase patent application in the USA
There is no separate requirement for filing request for examination of US national phase patent application. The examination of US national phase patent application occurs simultaneously with filing of the US national phase patent application. USPTO has Patent Prosecution Highway for accelerated examination and the same can be requested while filing PCT national phase patent application.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.