Patent
Law: Part V
International
Patent
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.
REQUIREMENTS
You have to get an attorney who can meet the qualifications of the USPTO
and are therefore registered to practice before the USPTO.
TIMETABLE
These 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 20th 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 30th month from the international
application's priority date: -- - assuming that you elected
to enter Chapter II,
You must file 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.
U.S. Required Filing Fees (11/7/2000)
1. Regular Entity
US$ 100,00 USPTO was IPEA, Claims meet PCT Art. 33 requirements
US$ 690,00 USPTO was IPEA, Claims do not meet PCT Art.
33 requirements
US$ 710,00 ISA was USPTO
US$ 860,00 ISA was EPO or JPO
US$ 1000,00 USPTO not ISA or IPEA
----US$ 40,00 Assignment Recordation Fee
Small Entity
US$ 50,00 USPTO was IPEA, Claims meet PCT Art. 33 requirements
US$ 345,00 USPTO was IPEA, Claims do not meet PCT Art.
33 requirements
US$ 355,00 ISA was USPTO
US$ 430,00 ISA was EPO or JPO
US$ 500,00 USPTO not ISA or IPEA
----US$ 40,00 Assignment Recordation Fee
ATTORNEY'S FEES
Typical hourly fees for the patent prosecution activities
of U.S. patent attorneys range from $150.00 to $350.00.
Sometimes the initial filing processes can be settled 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 hourly rate.
In addition to 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.
Average legal fees for drafting and filing such Responses can be from
$1,000.00 to $2,000.00, depending upon the complexity of the claims at
issue.
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.
USPTO ISSUANCE FEE
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.
USPTO MAINTENANCE
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.
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