National Phase of PCT

[iassaf]

Hi,

I have filed a PCT with Canada as the receiving office. I currently need to enter the National Phase in the US. One issue with my PCT application is that it Lacked Unity and currently, I need to file two Utility patents based on that PCT application.

I started filing using the EFS. I got to the Files submission stage.

- What do I need to submit? Since I amended the PCT application, do I file amendment or I just file as new patent?

- Do I file two separate patent applications referencing the same PCT application with no reference to the omissions these patent have compared the PCT application or I need to file a divisional?

- Any other thing I need to file/upload, in addition to Abstract, Claims, specifications and drawings?

- Do I need to attach the PCT application (priority document)?

Thank You,
ImadWhat is the name of your state (only U.S. law)?

 

[FlyingRon]

Unless something happened last night while I was sleeping, Canada is still not part of the US.

 

[iassaf]

The PCT is filed with Canada as the receiving office. I need to do the national phase in Canada, US and EU.

 

[divgradcurl]

You need to file both the original and amended applications. See 35 U.S.C. 371 (c):

(c) The applicant shall file in the Patent and Trademark Office -

(1) the national fee provided in section 41(a) of this title;

(2) a copy of the international application, unless not required under subsection (a) of this section or already communicated by the International Bureau, and a translation into the English language of the international application, if it was filed in another language;

(3) amendments, if any, to the claims in the international application, made under article 19 of the treaty, unless such amendments have been communicated to the Patent and Trademark Office by the International Bureau, and a translation into the English language if such amendments were made in another language;

(4) an oath or declaration of the inventor (or other person authorized under chapter 11 of this title) complying with the requirements of section 115 of this title and with regulations prescribed for oaths or declarations of applicants;

(5) a translation into the English language of any annexes to the international preliminary examination report, if such annexes were made in another language.

You also might want to review MPEP section 1893.01(a), which discusses amendments in the international application and how to transmit those amendments to the U.S.

 

[iassaf]

More questions

Thanks divgradcurl,

I think I should have given more information.

I have filed a US Provisional patent then I filed a PCT (in Canada) claiming the priority date of the US provisional. I've included more than one invention in the Provisional and PCT (different features of one product, i.e. suspension, folding mechanism and other features). The examiner objected to the unity issue but researched all matter in the PCT.

Currently, I've decided to pursue only two features and have prepared two patents based on the PCT, one for the folding mechanism and one for the suspension. I need to file in Canada, US and EU (before the end of May). Questions are:

1- Can I just file two utility patents claiming the PCT patent priority date? or I need to enter the National Phase of the PCT?

If the answer to the first question is YES:
2- Are there any disadvantages versus entering the National phase (little savings in fees)?
3- Do I need to mention the US Provisional at all (since it is well referenced in the PCT)
4- Do I need to supply the priority document (i.e. US Provisional and PCT)?

If the answer to the first question is NO and I have to enter the National Phase:
5- Do I enter the National phase twice (once with suspension patent and once with the folding mechanism patent)?
6- How would I file the new patents (e.g. amendments, divisional, etc)?
7- Do I need to file the original PCT too? It's been 29 months and I think the USPTO has a copy already.

Thank You in advance

 

[divgradcurl]

What is your connection to Canada? Are you a Canadian citizen living in Canada?

 

[iassaf]

Yes. I am a Canadian citizen living in Canada.

 

[divgradcurl]

There is so single "best" answer to your question. In the U.S., it would probably be easiest to simply enter the national stage with your application as is, and let the U.S. examiner decide if your patent is subject to a restriction requirement or not -- if it is, then you can elect one set of claims, and then file a divisional in the U.S. for the second set of claims.

However, I do not know how the CPO or EU handle these sorts of things, if they want to see that you responded to the international examiner's restriction requirement prior to entering the national stage in those two offices. If those two offices require that you handle the restriction requirement (doubtful) prior to national stage entry, it would make sense to do so. Since you have had the international search done on all of the inventions in your PCT application, the usual practice would be to go directly to the national stage in each receiving office, and see if you get local restriction requirements or not, and work from there.

Typically an international examiner's report and search is used by the national offices to simplify their own examination, and is not a substantive examination that needs to be responded to prior to entry into the national stage.

What documents the U.S. office needs can be found here: 1893.01(a)(1) Submissions Required by 30 Months from the Priority Date [R-5] - 1800 Patent Cooperation Treaty

 

[iassaf]

Thanks divgradcurl,


Ok, I'll enter the national phase then we'll deel with the examinor's decisions. The only issue is that the PCT document is very large with large numbe of claims, indepenent claims and multi-dependent claim. Filing, As Is, will be very expensive. Questions are:

1- Can I enter the national phase with amended patent (specifications and claims). This amended patent will include only the two invention I want to pursue. All other specifications and claims will be removed. In addition, the some of the specifications and claims will be rewritten (to make more clear and overcome the PCT examiner objections)?

2- If answer to (1) is yes, how would I do that? Do I just submit an amended patent with the application to enter the national phase? would the fees be calculated based on the original PCT or the amended patent?

3- Another scenario, I heard of, is to enter the national phase with the PCT then file (in the US) two CIP patent to cover the inventions I want to pursue. Could this done? If yes, what would happen to the original PCT entered in the National phase. Would I get refunded the fees I would have paid?




Thanks Again,

Imad

 

[divgradcurl]

1. I am not sure. I know you can enter the national stage with amended claims, but I don't think you can enter the national stage in the U.S. with an amended specification. 35 USC 371(3)(c) says you need to include a copy of amended claims along with the application to enter the national stage in the U.S., but says nothing about the specification.

Here it is: MPEP 1893.01(a)(2). The written description and drawings may not be amended pursuant to PCT article 19. So no, you may not enter the national stage with an amended specification, only amended claims.

2. If you only have amended claims, you need to include a copy of the amended claims with the application. See 35 USC 371(c) for the requirements for entering the national stage in the U.S.

3. Yes, but why? If your original application has the requisite disclosure, it would be easier (and cheaper) to have the full application enter the national stage, then if you get a restriction requirement elect one set of claims, then file a divisional for the other set (or multiple divisionals for multiple sets of claims). You only need to file a CIP if you are adding new matter to the specification. If you are adding no new matter, you can use a divisional (if you get a restriction requirement) or a continuation (if you don't get a restriction requirement, but still want to have a different set of claims for the same spec).

If you did decide to file multiple CIP's or divisionals or continuations in lieu of going forward with the national stage PCT application, you could let the PCT go abandoned once you filed the CIP's. You would need to have the PCT application "alive" until you filed the CIP's to retain priorty. You will not be refunded the fees you paid to enter the national stage, even if you let the PCT go abandoned.