1、 The pathway for PCT application to enter the national phase in the United States

Two ways: regular entry and bypass application

1. PCT Conventional Entry (According to Article 35 U.S. C. 371)

General requirements:

- Meet the document and procedural requirements for entering the national phase of PCT applications;

Entering the text can be based on internationally published texts or modified texts from the international phase;

PCT28/41 modifications must not exceed the scope of international published texts.

2. Bypass application (under 35 U.S. C. 111 (a))

advantage:

It is possible to modify the document without being limited by the original PCT text content, and even add new content (partially continue to apply), which more flexibly compensates for the deficiencies of the original PCT text;

Can enjoy priority examination treatment for domestic applications in the United States;

Retain the priority date of the original PCT application;

2、 The characteristic procedures of US patent examination

1. Review process diagram

2. Continuing infringement review

① Timing: After the issuance of the Final OA notice or before the payment of the license fee

② Motivation: There are claims that have not been recognized or reviewed and have potential for authorization

③ Function: Restart the review, write new claims, introduce new evidence and reasons, and regain the opportunity for review

④ Restriction: No new technological content shall be introduced

⑤ Cost: Payment per use, unlimited number of times

3. Continue to apply

① Timing: The parent case is under review, including submission after receiving the final rejection opinion

② Motivation: By submitting a continuation application, the amended claims or unrecognized claims are subject to new examination.

③ Function: Equivalent to submitting another application and still enjoying the application date of the parent case;

④ Restriction: The instruction manual is the same as the parent case and no new content may be added

⑤ Cost: New application for payment incurs modification fee for homework

4. Partial continuation of application

① Timing: The parent case is under review and is usually submitted after receiving the final rejection opinion

② Motivation: When there is no prospect of authorization in the parent case, introducing features and claims that have not been disclosed in the parent case can overcome the shortcomings of the parent case (including deficiencies in profitability and writing)

③ Function: Unrestricted by the scope of the parent case, open a new application for review

④ Limitation: The application date is calculated separately (for claims within the scope of the parent case and for newly introduced claims), but the validity period of both claims is calculated from the application date of the parent case

⑤ Cost: New application for payment incurs modification fee for homework

5. Comparison Table: RCE \ CA \ CIP

6. Information Disclosure Statement

Based on the duty of good faith, the applicant, lawyer, or agent must disclose to USPTO all domestic and foreign interests, publications, or other information that has a substantial impact on the application.

Any violation of the above obligations may render it impossible to authorize or render the authorization invalid, thereby rendering it impossible to implement.

IDS runs through the entire patent examination process

7. The timing for submitting an Information Disclosure Statement (IDS) before issuing the certificate

3、 Practical operations when applying for PCT entry into the United States

1. General principle

Accurate translation, faithful to the original text

Make appropriate modifications to avoid adverse effects

Cost control to reduce applicant costs

2. Claims

① Formal requirements

Independent claims do not need to distinguish between the preamble and the feature part, while dependent claims are separated by "where" between the referenced subject matter without additional features;

Ensure correct citation basis and use "a/an" and "the/said" correctly when translating

② Cost control

The standard for the number of claims exceeding the limit: if the number of exclusive claims exceeds 3, and the total number of claims exceeds 20;

Multiple dependent claims will increase costs, and multiple dependent claims will be split into single dependent claims for calculation;

Multiple dependent claims are not allowed to be subordinate to other dependent claims;

(Different from Europe and Japan)

3. Instruction manual

① Avoid wording that is unfavorable for interpretation

Avoid using "Invention" throughout the entire manual, and in practice, "Disclosure" is more commonly used

② Not recommended to use 'Preferred'

In summary, improper wording in infringement litigation may lead to unfavorable interpretation of the claims, i.e. the scope of protection is limited to include features described as "inventions" or priority embodiments. Therefore, it is necessary to make modifications when entering.

② Statements using cross referencing

4. Illustrations in the instruction manual

① Clear lines

② Each technical feature of the claims is reflected in the content

5. Summary

① Formally, it should be an independent paragraph with no more than 150 words

② In terms of content, US examiners can use the abstract section to interpret claims, and the Federal Circuit Court of Appeals often refers to the abstract section to determine the scope of protection of inventions.

In view of this, if necessary, the abstract can be actively modified upon entry, with only a brief description of the broad claims.

4、 How to expedite the review process

1 PCT-PPH

Applicable conditions:

PCT application has entered the national phase in the United States

At least one claim in the international search report is patentable (in terms of novelty, inventiveness, and industrial applicability)

The scope of protection of the claims applied for in the United States corresponds to the scope of protection already recognized in the international stage, which is equal or smaller.

No official request fee

2. Prioritized Examination (PE): 12000 cases per fiscal year

① First priority review (Track One)

② Applicable conditions:

- Non PCT entry into the United States application, non US provisional application;

- Exclusive rights not exceeding 4, claims not exceeding 30,

- Claims without multiple citations;

- Submit statements or forms, etc

③ Priority review request fee: $4000 for large entities

④ Effect: Obtain final decision within 1 year

USPTO releases data statistics: The average time for receiving the first review opinion is 2.1 months, and the average time for making the final review decision is only 6.5 months

3. Accelerated review

① Accelerated Examination (AE)

② Applicable conditions:

- The number of exclusive rights shall not exceed 3, and the number of claims shall not exceed 20;

- Claims without multiple citations;

- The applicant provides a prior art search, including corresponding search results and a statement of significant differences between the claims of this application and the prior art;

③ If the examiner believes that the document does not meet the requirements, the acceleration request can be refused. Rarely used in practice;

④ Accelerated review request fee: $140