[ Main Page ] [ Firm Profile ] [ Biographical Sketch ] [ Intellectual Property Resources ] [ MD Attorney Resources ] [ MD Entrepreneurial Links]  [ Recent Published Papers ] [ The U.S. Trademark Registration Process ] [ The U.S. Copyright Registration Process]  [Overview of the Process for Obtaining a U.S. Utility Patent] 

U.S. National Phase of a PCT International Patent Application

The following information is provided as guidance to aid the foreign legal representatives of non-U.S. residents to successfully complete the U.S. National Phase, under 35 U.S.C. 371, of the prosecution process for a PCT International Patent Application.

As you probably already know, this involves filing and prosecuting a patent application, based on the PCT International Patent Application, in the United States Patent and Trademark Office (USPTO) for an invention which the USPTO must find to be “novel, non-obvious and useful” (i.e., analogous to the PCT Article 33: novelty, inventive step and industrial applicability standards of the PCT International Patent Application) in order for a U.S. patent be granted. 

Unfortunately, unless you have met the qualifications of the USPTO and are therefore registered to practice before the USPTO, you will not be able to directly representative your clients in this matter.  Thus, most of you will have to retain someone, such as myself, to handle this matter for you and your client.

In order to assist you with planning a timetable and budget to share with your clients regarding the U.S. patent prosecution, outlined below are the key steps and costs involved in initiating this process for the granting of a U.S. utility patent:

Before the end of the 20^th month from the international application’s priority date: -- - assuming that you have elected not to enter Chapter II (i.e., before the end of the 19th month from the international application’s priority date, the filing of a DEMAND for international preliminary examination of the international application), or

Before the end of the 30^th month from the international application’s priority date: -- - assuming that you elected to enter Chapter II,

you must cause to-be-filed for your client the following with the USPTO:

(1) a copy of the PCT International Patent Application, unless the USPTO has already received a copy communicated by the International Bureau, (2) if warranted, an English Translation of the application, (3) if warranted, PCT Art. 19 Amendments to the application’s claims, (4) a Transmittal Letter that identifies the International Application and the Inventor/s, and contains a request to begin the U.S. national phase procedures (5) a Declaration/Oath Signed By The Inventor/s, in which the inventor declares, under penalty of prosecution for false statements, that he/she believe themselves to be the first, true inventor of the invention for which the patent is sought, (6) a Power of Attorney appointing one registered to practice before the USPTO to represent the inventor in this matter, (7) Required Filing Fees (see below), (8) an Information Disclosure Statement which lists the prior art known to the inventor, (9) if warranted, a Small Entity Statement seeking reduction of the U.S. filing fees (e.g., appropriate for a business entity having less than 500 employees), and (10) if warranted, an Assignment document wherein the inventor’s rights are assigned to another, often the applicant in the PCT International Patent Application.

As of 11/7/2000, the U.S. Required Filing Fees include:

 It has been my experience that this process can most efficiently and expeditiously be completed by retaining, approximately two-three or more months before the filing is due, a U.S. patent attorney to handle this matter for you and your client.  Since most U.S. attorneys require their clients to sign “Engagement Letters for Legal Services,” retaining a U.S. patent attorney will typically involve your client signing such an Engagement Letter and providing the U.S. patent attorney with a copy of the file history of the PCT International Patent Application.

The U.S. patent attorney’s fees for handling this initial filing will typically be a function of the amount of time that the patent attorney must devote to making the filing, which will be a function of many factors, including: (1) the complexity of the invention, (2) whether the application must be amended to increase the strength and enforceability of the resulting U.S. patent, (3) whether the invention has been found to meet PCT Article 33 patentability requirements, and (4) the extent of the involvement of the USPTO in the international phase of the application’s prosecution.  Typical hourly fees for the patent prosecution activities of U.S. patent attorneys range from $150.00 to $350.00.

Because I am an experienced patent attorney with an established international client base, and because I wish to increase the proportion of my practice devoted to such PCT matters, I am currently offering to handle such initial filing processes for a flat fee of $500.00, assuming that the application is of only moderate complexity, it meets PCT Article 33 patentability requirements, and no initial amendments to the application are required.  If this is not the case, any additional, required work would be billed at my hourly rate of $200.00.

In addition to such initial filing matters, further work could include responding to a USPTO Initial Office Action denying patent protection for some or all of the application’s patent claims – this would probably require drafting a Response that amends the application and argues for broader claim allowance.  My legal fees for drafting and filing such Responses typically average from $1,000.00 to $2,000.00, depending upon the complexity of the claims at issue, etc.  In terms of the timing of such work, the work backlog at the USPTO is currently such that these Initial Office Actions are often being rendered some 9-16 months after the initial filing in the U.S. national phase of an application’s patent prosecution.   

Upon receipt from the USPTO of a Notice of Allowance indicating the extent of final claim coverage to-be-allowed, an issue fee, currently in the amount of $1,240.00 (note: half of this amount for small entity applicants), is immediately due before the patent can issue.  In addition to paying this issuance fee, one or more additional USPTO forms will typically need to be filed at this time.  My legal fees associated with this step typically average $400.00 to $700.00.  

Periodically during the life of the patent (up to 20 years from the application’s priority date for those applications filed on or after 6/8/95), the inventor must pay USPTO maintenance fees in order to allow his/her patent rights to continue to be in effect . These come due at times that are measured from the patent's date of issuance. Their amounts increase with time under the assumption that the inventor will realize greater profits on the invention the longer that it has been in existence. For the non-small entity inventor/patentee, these maintenance fees and their due dates are: @3.5 years: $850.00, @7.5 years: $1,950.00 and @11.5 years: $2,990.00 (note: half of these amounts for small entity applicants).

Once a U.S. patent is granted, its patent number should be placed on those products to-be-sold in the U.S. (i.e., Pat. 6,000,000) in order to give a potential infringer constructive notice of the patentee’s patent rights.  Otherwise, the patentee will only be able to recover damages from an infringer from the day the infringer had actual notice of his/her infringement, rather than from the day the patentee began marking the invention.

If you think that you might wish for me to assist you in the prosecution of the U.S. national phase of your PCT International Patent Application, I encourage you to please email me at larry@GuffeyLaw.com so that we may begin to determine whether I can be of service to you.

Copyright © 1997-2001 Larry J. Guffey

[ Main Page ] [ Firm Profile ] [ Biographical Sketch ] [ Intellectual Property Resources ] [ MD Attorney Resources ] [ MD Entrepreneurial Links ]
[ Recent Published Papers ] [ The U.S. Trademark Registration Process ] [ The U.S. Copyright Registration Process ]

Disclaimer: The article's information is not legal advice. It cannot be such since legal advice must be tailored to the specific circumstances of each case, including its jurisdictional law which can vary greatly from state to state. However, it is hoped that the information provided in this article will be helpful to this site's visitors in familiarizing them with issues that may affect them.