Entry into US national phase from a PCT (Patent Cooperation Treaty) patent application

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This page is chiefly for a patent firm located outside of the US that has filed a PCT application on behalf of the firm's client and now wishes to enter the US national phase. This page may also be of interest to a corporate applicant located outside of the US that has filed its own PCT application and now wishes to enter the US national phase.

Reading this page does not make you a client of OPLF and does not make OPLF your attorney.

Choosing OPLF to attend to your US national-phase entry from a PCT application

The attorneys and staff at OPLF have substantial experience with entry into the US national phase from PCT applications. The firm has handled over one thousand entries into the US national phase.

What we need from you

The discussion that follows, both as to what we will need from you and as to what things cost, assumes that the PCT application of interest has been published by the International Bureau of WIPO ("IB"). If you are interested in entry into the US national phase from a PCT application that has not been published by the IB, then please contact OPLF to learn about additional things that we will need from you.

For Oppedahl Patent Law Firm LLC to enter your PCT patent application into the US national phase, at a minimum we will need:

• The PCT publication number (WO publication number).

It will save you additional government fees and additional professional fees if you are also able to provide, prior to entry into the US national stage, the following:

• Electronic access to the PCT application
  • access to the PCT application in WIPO's ePCT system
  • if access to the application in ePCT is impossible, then a "permalink" link to the application file in Patentscope
• Materials for Information Disclosure Statement
  • identification by email of all references to be disclosed in an Information Disclosure Statement (IDS) (how to know which references to disclose)
    • for each reference to be disclosed in an IDS that is not a US patent or US published patent application, a PDF copy of the reference
    • for each reference to be disclosed in an IDS that is not in the English language, a translation of that reference into the English language (or a concise explanation of relevance thereof)
• Inventor's declaration
  • for a PCT application having an international filing date prior to September 16, 2012, an Inventor's Declaration signed by all of the inventors. The signed declaration may be scanned in black and white and emailed to us, or it may be faxed to us. The USPTO does not require the original signed document.
  • for a PCT application having an international filing date on or after September 16, 2012, an Inventor's Declaration signed by each of the inventors. The signed declaration may be scanned in black and white and emailed to us, or it may be faxed to us. The USPTO does not require the original signed document.
• Assignment
  • for each inventor, an assignment from the inventor to the Assignee. The signed assignment may be scanned in black and white and emailed to us, or it may be faxed to us. The USPTO does not require the original signed document.
• Power of attorney
  • for a PCT application having an international filing date prior to September 16, 2012, a completed and signed Form PTO/SB/80. The completed and signed Power of Attorney may be scanned in black and white and emailed to us, or it may be faxed to us. The USPTO does not require the original signed document.
  • for a PCT application having an international filing date on or after September 16, 2012, a completed and signed Form PTO/AIA/82B. The completed and signed Power of Attorney may be scanned in black and white and emailed to us, or it may be faxed to us. The USPTO does not require the original signed document.
• for each inventor, a postal mailing address (by email)
• for each inventor, the inventor's residence city and country (by email)
• for each inventor, the inventor's citizenship (by email)
• if the PCT application is not in the English language, a translation of the PCT application into the English language (preferably as a word processor document by email attachment)
• a statement by email as to whether any amendments to claims of the PCT application were made under Article 19
• if the claims were amended under Article 19, a copy of the amended claims (preferably as a word processor document by email attachment)
• if the Article 19 amended claims are not in the English language, a translation of the amended claims into the English language (preferably as a word processor document by email attachment)
• a statement by email as to whether a Demand for Preliminary Examination was made
• if a Demand was made, an English-language translation of the annexes of the International Preliminary Examination Report or International Preliminary Report on Patentability
• a statement by email as to whether any amendments of the PCT application were made under Article 34
• if the application was amended under Article 34, a copy of the amendment (preferably as a word processor document by email attachment)
• if the Article 34 amendment is not in the English language, a translation of the amendment into the English language (preferably as a word processor document by email attachment)

Please note that we prefer not to receive these documents from you on paper. It is very much our preference to receive them as PDF and word processor files sent via email.

Note that for any new client we will generally ask for payment in advance, prior to undertaking the work.

What will this cost?

Government fees for entry into the US national phase are likely to be about $1480. This assumes:

• no multiple dependent claim
• total claims no more than twenty
• independent claims no more than three
• page count less than one hundred pages

The government fees are cut approximately in half if the applicant qualifies as a "small entity".

Our professional fee for attending to entry into the US national phase is likely to be in the range of $900 to $1800, depending upon many factors including the extent to which all needed documents are provided to us timely and the extent to which the papers are already in good condition for filing in the USPTO. The professional fee of around $900 assumes:

• All of the following are provided at time of filing:
  • inventors' declaration
  • English translation of application (if not already in English)
  • English translation of amendment under Article 19 (if any)
  • English translation of annexes to International Preliminary Report on Patentability (if any)
• Little or no substantive review expected from OPLF.

Other likely costs include the following.

• Information disclosure statement (IDS). This incurs our professional fee of about $200, assuming that all IDS-related documents are provided to us by PDF and email prior to filing.
• Recordation of assignment. Our professional fee is about $120.

Foreign firms and their clients differ from one application to the next in the extent to which they wish us to review documents substantively and in the extent to which they wish us to carry out independent review and revision of the documents. Two possible approaches are:

• Inexpensive filing. Some clients prefer that the initial filing in the USPTO be as inexpensive as possible, and of course this can be achieved only by reducing to a minimum the level of review and revision by OPLF at the time of filing. The client will, of course, understand that this only defers some likely costs until later, such as redrafting of claims for US practice and editing the application for idiomatic US English. When a filing is done inexpensively, there is the risk that the entire first Office Action and response thereto will be spent merely getting the application and claims into proper form for US practice, with little or no progress at that stage toward establishment of patentability of the invention.
• Proactive filing. Other clients prefer to be proactive and authorize US counsel to carry out a review and revision of the entire application, as to form as well as substance for US practice and idiomatic English.