PATENTS

PCT NATIONAL PHASE ENTRY TO U.S.

Minimum requirements by 30 months from priority date

– Payment of basic national fee.
– Ensure that copy of International Application has been provided to U.S. Patent and Trademark Office.
– Submission of applicant, inventor and application details (name, address, residence, date and number of priority document if any).

Required Documents that can be filed later (with later payment of additional official fees)

– Declaration of inventor. There are some alternative provisions if the inventor is not available to sign.
– English translation of International Application – note that the translation must be of the International Application as filed. If any amendments are to be made to claims or specification, they should be submitted separately as a preliminary amendment.

PATENTS – NON-PCT APPLICATIONS

Minimum requirements to receive filing date

– Submission of specification, at least one claim, abstract and drawings (if any). May be submitted in language other than English (with official fee surcharge). Translation document will be required later.
– Submission of inventor and application details (name, address, residence, date and number of priority document if any). For Utility (Invention) applications, claim for priority must be filed within the later of four months from the actual filing date of the US application or sixteen months from the filing date of the prior foreign application. For Designs, the claim for priority and the priority papers must be filed before the patent is granted.

Required Documents that can be filed later (may incur additional official fees for later filing)

– Declaration of inventor. There are some alternative provisions if the inventor is not available to sign.
– English translation of Application (if originally submitted in other than English).

Certified copy of priority document is not required at initial filing date but should be submitted sometime during prosecution of the application. If country of priority document participates with US in Electronic Priority Document Exchange (PDX) Program, the documents will be retrieved electronically.

All documents (except certified priority documents for non-PDX Program countries) can be submitted to us by email in PDF format. Filing of specifications in DOCX format is increasingly encouraged.

PATENTS

Maintenance of Issued Utility Patents

Maintenance fees must be paid at 3.5, 7.5 and 11.5 years from issue date. Can be paid late during 6 month grace period with official fee surcharge. Power of attorney not required to pay maintenance fees. If fee not timely paid within grace period and delay was unintentional, may be possible to revive with petition and substantial petition fee.

Large Entity/Small Entity/Micro Entity Status

US allows reduced fees for applicants qualifying for small entity or micro entity status. It is important that small entity or micro entity status not be claimed if the applicant is not qualified, as the validity of the patent may be in jeopardy if small entity or micro entity status is improperly claimed. Please inquire if you have questions regarding micro vs. small vs. large entity status.