Our National Phase Entry and Prosecution Process

Attorneys at the Firm enter and prosecute the United States national phase portion of Patent Cooperation Treaty (PCT) and Paris Convention patent applications for patent owners and law firms around the world. Before filing a United States national phase application, the Firm’s attorneys conduct a thorough review of the application and the business objectives. Attorneys at the Firm provide guidance and advice regarding claim strategy and the intricacies of United States law throughout prosecution. The Firm’s IT infrastructure is set up to efficiently manage this process so that most of the components of the Firm’s National Phase Entry and Prosecution services can be provided on a flat-fee basis.

Requirements for Entry

A complete conflict check is required before the Firm will begin a National Phase Entry for a new customer. Click here to begin the conflict check process.

Once the conflict check is cleared, the following items are required:

  • A copy of the application as filed
  • A copy of the application as published (if available)
  • A power of attorney
  • Any executed assignment(s) from the inventor(s)
  • An executed oath from each of the inventors
  • Prior Art for the Information Disclosure Statement (IDS)
  • English translations of:
    • The application as filed (if filed in a language other than English)
    • Any prior art documents
  • Any amendments filed in the PCT

 

Prosecution

Upon receiving any communication from the United States Patent and Trademark Office, we will send you the following:

  • A copy of the communication
  • A copy of any prior art cited against you
  • Due dates
  • Substantive comments on the communication, including our recommendations for you to review with the client

Declaratory and Experimental Evidence

The United States makes extensive use of declaratory and experimental evidence. Declarations must be written to not only overcome the examiners’ rejections, but must also be written to withstand potential challenges from litigation counsel, the Patent Trial and Appeals Board (PTAB), the Federal Circuit and more experienced personnel in the USPTO reexamination division.

The United States Patent Office is quite rigorous in defining the proper experimental protocol to demonstrate an improvement or a synergistic result. Failure to follow this protocol can result in the patent failing to withstand challenges by the examiner, experts, litigation counsel, the PTAB, the Federal Circuit and more experienced personnel in the USPTO reexamination division.

The Firm’s attorneys have industrial and laboratory experience prior to becoming attorneys. These attorneys provide significant expertise in recommending the proper experimental protocol for declarations. The Firm also has a long history of experience with experts in a variety of fields who can provide objective third party evidence in patent cases.

The Examiner Interview

An Examiner Interview is an exceptionally effective way to overcome difficult rejections. The Firm does not charge for travel time and expenses to attend an Examiner Interview.

Contact Us

If you would like to speak to an attorney at the Firm regarding National Phase Entries, please contact us for more information.

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