Requirements For Filing PCT National Phase Patent Application In USPTO

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When an inventor or legal representative or applicant decides to file a patent application in foreign countries, the United States of America (USA) would be the first choice for filing due to the market potential in various fields 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 the United States Patent and Trademark Office (USPTO). The basic requirements for PCT national phase filing​ patent applications in USPTO are as follows.

  • Timeline for PCT national phase filings
  • Documents Requirement for national phase filings
  • Information Disclosure Statement

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Timeline for PCT national phase filings in the USA

The inventor or legal representative or Applicant has to fulfill the requirement of thirty months deadline for PCT national phase filing in the 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 the 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 the USA

The USA national phase patent application has to be filed in English since the official language of the 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 requests for examination of the US national phase patent application. The examination of the US national phase patent application occurs simultaneously with the 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.

About the author: Mr. Dhakshina Moorthy, a legal practitioner at Global Patent Filing. In case of any queries please contact/write back to us at support@globalpatentfiling.com.

 

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