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FAQ

PCT/Paris Route Entering Into the USA

If you are non-US citizen or entity who has applied a patent in your home country, and then you plan to ‘extend’ your patent to the U.S., then yes, this webpage is right for you. Else if you are an U.S. applicant need to draft and apply a new US patent, please refer to our Utility Patent.

In the U.S. Patent Law, “invention-creations” include Utility Patent and Design.

“Utility Patent” means any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. Once granted, it can last as long as 20 years.

“Design” means any new, original and ornamental design for an article of manufacture. Once granted, it can last as long as 15 years.

The applicant should enter the U.S. by PCT national phase within 30 months from the priority date. If the deadline is missed with any justified reason, the applicant may file a revival request to the USPTO with a statement indicating that the delay in entry was unintentional and pay an extra fee.

The reasons to choose America:

The biggest market

Reasonable application and maintenance fees ( One fifth of European Patent Office, less than Japan and Korea)

The most effective patent right protection. Extremely high compensation.

Patent Prosecution Highway (PPH) which provides accelerated patent prosecution procedures with the support of the USPTO

Therefore, US is the most important country for filling patents.

Filing to Grant Procedure for Patent

STEP 1:

FILING

Filing National Application (PCT Route/Paris Convention Route);

STEP 2:

PRELIMINARY EXAMIANTION

Preliminary Examination By The Office;

STEP 3:

PUBLICATION

Publication Of The Patent (Within 18 Months After Application);

STEP 4:

SUBSTANTIVE EXAMIANTION

Request for Examination has to be made at the time of filing the application;

STEP 5:

GRANT

Issuance Of Patent Certificate (Taking Around 2 to 3 Years After Application).

Documents

Required

Power of Attorney (PoA).

Declaration to be executed by the Applicant.

Assignment Deed.

PCT Application number if it’s PCT National Phase, else original Patent Application information is required.

Frequently Asked Questions:

When should I file the PCT national entry into the USA? icon icon
  • You’d better enter the U.S. by PCT national phase within 30 months from the priority date. If the deadline is missed with any justified reason, the applicant may file a revival request to the USPTO with a statement indicating that the delay in entry was unintentional and pay an extra fee.
What’s the requirement of language for the patent application? icon icon
  • English version of abstract, claims, specification, drawings (when explanatory text is included).
When should I request the substantive examination? icon icon
  • Request for Examination has to be made at the time of filing the application.
Is it hard to get it granted in the USA and how long will it takes? icon icon
  • It is not hard to get it granted in the USA and it will take around 2 to 3 years after application. Moreover, you can request for PPH to accelerate the examination, by which it only takes around 1 year from filing to grant.
What’ s the maintenance cost after the patent being granted? icon icon
  • Year
    (From the grant date)    		 Maintenance Fees (USD)
    Large Entities Small Entities Micro Entities
    3.5 years 2,000 800 400
    7.5 years 3,760 1,504 752
    11.5 years 7,700 3,080 1,504
    Maintenance fees for U.S. patents are not paid annually. After they are granted, the applicant should pay the fees three times. The first payment is made 3.5 years after the grant, and the subsequent payment is made 7.5 and 11.5 years after the grant. The 3.5, 7.5 and 11.5 years are calculated from the grant date.

Brief Introduction of PPH in the U.S.

Patent Prosecution Highway(PPH) is a mechanism to facilitate expedited examination of applicants. The U.S. has established PPH cooperation with most major economies. And the PPH request is only applicable to utility patent application in the U.S.

PPH has two main advantages. For one thing, the PPH application will greatly shorten the pending period for the patent to be substantially examined by the examinor. Normally, the first office action(if any) will be issued within 2 months after the PPH request has been accepted, comparing with 12 to 18 months of pending period for the general application after requesting for substantive examination. For another, the authorization rate is higher than the general application.

If the PCT application has received a positive written opinion or an international preliminary examination report of patentability at the international phase, the applicant can file a PCT-PPH request to the Patent Office at the same time when we request for the substantive examination at the national phase. Else if you’ve chosen Paris Convention Route to entering into the national phase, General-PPH may be requested if you can provide the Office Actions, Responses to those Office Actions and Grant Notice(if any) of the Priority Patent.

Since requesting for substantive examination has to be made at the time of filing the application in the U.S., we will ask you if you are intend to request PPH before officially filing the application.

Cost Estimate for Filing an Utility

Description
Price (USD)
Attorney Fee
1,500
Govt fee* (Micro Entity**)
364
Total
1,864
Get Started
*

Govt fee will be charged later since we need to check the claims and specification of your PCT Application/Original Patent Application in case there’s any additional govt fee according to the Patent Office rules.

**

$364 govt fee assumes you are classified as "micro entity" by USPTO. If you have filed more than 4 nonprovisional patent apps in the past, or have an annual income of greater than $223,740, you may be classified as "small entity" or "large entity" which requires a $664 or $1,820 govt fee.