How does the the national phase of a patent application work in the United States?

A patent is a set of exclusive rights granted to inventors for an invention that meets certain requirements. Patents are territorial, a patent in one country is usually not valid in another country. Globalization makes it much more common for an inventor to want to get a patent in multiple countries around the world. An inventor is required to file an application for a patent in every country then inventor wants to gain a patent. In the past, getting a patent in multiple countries was extremely difficult. The Patent Cooperation Treaty has reduced the complexity of getting patents in multiple countries. The Patent Cooperation Treaty provides a unified procedure for filing patent applications to protect inventions in each of the countries that have adopted the treaty. The Patent Cooperation Treaty gives an inventor the ability to file a patent application in their home country and have that patent application accepted in other Patent Cooperation Treaty countries.

When an inventor files a patent application in their home country they have 12 months to convert their application to a Patent Cooperation Treaty application. Within thirty months of the home country filing date the inventor must file the patent application in all the other countries the inventor seeks patent protection. Filing an international application in a foreign country is known as entering the national phase.

In the United States 35 U.S.C. §371 is the statute that enables foreign inventors to file international applications in the United States. An international application are sometimes referred to as a “371 application.” A 371 application is an application which has entered the national phase of the Patent Cooperation Treaty by the fulfillment of certain requirements in a national Office, which is an authority entrusted with the granting of national or regional patents.

To avoid abandonment of the application the inventor must file a copy of the international application, unless it has been previously communicated by the International Bureau or unless it was originally filed in the United States Patent and Trademark Office and the basic national fee of $70 to $280 depending on the size of the inventor’s organization. Those are the most important elements of the international application and must be filed within thirty months of the home country application. If more than thrity months go by the inventor can no longer get a patent in the United States.

The following items must also be filed with the United States Patent and Trademark Office but additional time to file will be granted:

A translation of the international application, as filed, into the English language, if it was originally filed in another language and if any English language translation of the publication of the international application previously submitted under 35 U.S.C. 154(d) (§ 1.417 ) is not also a translation of the international application as filed (35 U.S.C. 371(c)(2));
The inventor’s oath or declaration (35 U.S.C. 371(c)(4) and § 1.497), if a declaration of inventorship in compliance with §1.63 has not been previously submitted in the international application under PCT Rule 4.17(iv) within the time limits provided for in PCT Rule 26ter.1;
The search fee set forth in § 1.492(b);
The examination fee set forth in § 1.492(c); and
Any application size fee required by § 1.492(j);

The filing fees required by the United States Patent and Trademark Office are fact specific and depend on which organization did the international patentability search.

After all the required documents have been filed with the United States Patent and Trademark Office, prosecution of the patent will begin. Patent prosecution is the term used to describe the analysis of the patent application. International patent applications will be held to the same patentability standards as domestic patent applications.

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