Understanding the US National Phase Patent Filing
The United States of America has always been a global center for the world’s best corporate and industries. Emerging startups and industries are constantly looking to enter the US for their expansion. Hence, it is important to discuss the issues related to the National Phase Entry through Patent Cooperation Treaty. With PCT the applicant can gain a lot of benefits, where some of the benefits that the applicant can get are:
- a delay in the time when papers must be submitted to the national offices;
- an international search (to judge the level of the relevant prior art) and a written opinion on the question of whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable before having to expend resources for filing fees, translations, and other costs;
- a delay in the expenditure of fees;
- additional time for research;
- additional time to evaluate financial, marketing, commercial, and other considerations; and
- the option of obtaining an international preliminary examination.
The time delay is, however, the benefit most often recognized as primary. Ultimately, the applicant might choose to submit the national stage application. The national stage is unique compared to a domestic national application in that:
(A) it is submitted later (i.e., normally 30 months from a claimed priority date as compared to 12 months for a domestic application claiming priority); and
(B) the status of the prior art is generally known before the national stage begins and this is not necessarily so in a domestic national application.
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Commencing the National Phase
The National Stage application is enshrined under 35 USC 371. The international application entering US National Phase will be accorded an eight-digit number which the applicant can use to track the patent application and also the process is also expedited.
Understanding 35 USC 371
What does it say? 35 USC 371 makes the whole process clear. As specified in the UPSTO official website, it states:
- Receipt from the International Bureau of copies of international applications with any amendments to the claims, international search reports, and international preliminary examination reports including any annexes thereto may be required in the case of international applications designating or electing the United States.
- (b) Subject to subsection (f) of this section, the national stage shall commence with the expiration of the applicable time limit under Article 22(1) or (2), or under Article 39(1)(a) of the treaty.
- (c) The applicant shall file in the Patent and Trademark Office —
- the national fee provided in section 41(a);
- a copy of the international application, unless not required under subsection (a) of this section or already communicated by the International Bureau, and a translation into the English language of the international application, if it was filed in another language;
- amendments, if any, to the claims in the international application, made under article 19 of the treaty, unless such amendments have been communicated to the Patent and Trademark Office by the International Bureau, and a translation into the English language if such amendments were made in another language;
- an oath or declaration of the inventor (or other person authorized under chapter 11) complying with the requirements of section 115 and with regulations prescribed for oaths or declarations of applicants;
- a translation into the English language of any annexes to the international preliminary examination report, if such annexes were made in another language.
- (d) The requirement with respect to the national fee referred to in subsection (c)(1), the translation referred to in subsection (c)(2), and the oath or declaration referred to in subsection (c)(4) of this section shall be complied with by the date of the commencement of the national stage or by such later time as may be fixed by the Director. The copy of the international application referred to in subsection (c)(2) shall be submitted by the date of the commencement of the national stage. Failure to comply with these requirements shall be regarded as abandonment of the application by the parties thereof unless it is shown to the satisfaction of the Director that such failure to comply was unavoidable. The payment of a surcharge may be required as a condition of accepting the national fee referred to in subsection (c)(1) or the oath or declaration referred to in subsection (c)(4) of this section if these requirements are not met by the date of the commencement of the national stage. The requirements of subsection (c)(3) of this section shall be complied with by the date of the commencement of the national stage, and failure to do so shall be regarded as a cancellation of the amendments to the claims in the international application made under article 19 of the treaty. The requirement of subsection (c)(5) shall be complied with at such time as may be fixed by the Director and failure to do so shall be regarded as cancellation of the amendments made under article 34(2)(b) of the treaty.
- (e) After an international application has entered the national stage, no patent may be granted or refused thereon before the expiration of the applicable time limit under article 28 or article 41 of the treaty, except with the express consent of the applicant. The applicant may present amendments to the specification, claims, and drawings of the application after the national stage has commenced.
- (f) At the express request of the applicant, the national stage of processing may be commenced at any time at which the application is for such purpose and the applicable requirements of subsection (c) of this section have been complied with.
As per 37 CFR 1.491 National Stage Commencement, Entry and Fulfillment, it states that Subject to 35 U.S.C. 371(f), the national stage shall commence with the expiration of the applicable time limit under PCT Article 22(1) or (2), or under PCT Article 39(1)(a). Subject to 35 U.S.C. 371(f), the national stage shall commence with the expiration of the applicable time limit under PCT Article 22(1) or (2), or under PCT Article 39(1)(a).
All the above information has been taken from the official website- https://www.uspto.gov/web/offices/pac/mpep/s1893.html