National Phase Entry in the USA

March 30, 2020

Patent fees for National Phase entry in the USA

Get in touch with IIPLA today for Fees associated with National Phase Entry applications in the USA

Deadline for National phase entry in the USA

The deadline to file for national phase entry in the USA for PCT application is 30 months from the priority date.

Filing requirements in the USA

English is the official language of the USA patent application. If the PCT application is filed in any other foreign language, then the English translation must be submitted after the filing and in response to office action responses. An extension of PCT filing is also available on condition that corresponding fees are paid.

To obtain the date of filing, a patent application in the USA should have:

– Information Disclosure Statement (prior art details).

– national fee;

– executed oath or declaration (can be submitted after 30-month deadline);

– copy of the PCT application, unless previously communicated by the International Bureau (should include translation if the international application is not in English);

The power of attorney legalization is not required. When entering the USA national stage of a PCT application, there is no set deadline for submitting a POA.

Examination of a national phase patent application in the USA

A substantive examination request is not required. It can take place together with entring the USA national phase entry. An accelerated examination under PPH can be requested.

Information Disclosure Statement

Any information that is considered to be important in the determination of patentability of the claimed invention can be disclosed by the applicant using the Information Disclosure Statement (IDS). This information can be of various types, and includes, but is not limited to, prior art only. The duty goes on until a patent is issued or the patent application is abandoned. Failure to submit an IDS intentionally may result in the declaration of the patent as unenforceable.

If the IDS is filed within three months of the national phase entry in the U.S. or before the 1st office action, then the filing of an IDS will be without any charge of government fee.

Additional fees must be paid if any information contained in the IDS was first cited in the communication from the foreign patent office in a counterpart foreign patent application more than three months prior to the filing of IDS.

Novelty grace period

The novelty grace period in the USA lasts 12 months before the U.S. filing date or before the priority date,

– If the disclosure occurs after public disclosure of the same invention by the parties set forth above.

– If the disclosure was made by the inventor or by a person who obtained the information from the inventor (directly or indirectly);

Grant, validity term and maintenance fees

The official issue fee for a patent filing in the USA should be paid within three months from the mailing of the Notice of Allowance. The due date for annual fees comes in 3.5, 7.5, and 11.5 years from the patent issue date. The annual fees can be paid within a five-month period preceding the due date without any surcharge. Late payment with a surcharge is possible within six months after the expiration. There is no early payment. The validity of a patent in the USA is 20 years from the USA filing date.

Duration of registration procedure

The granting of a patent can take an average of 32 months from the USA filing date.

Utility Model

There is no utility model protection available under the legislation of the USA.

Representation by a patent attorney

The PCT national phase entry in the USA should be performed through a U.S. registered patent attorney or agent.

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