Practice area: Patents & IP

INBOUND PCT ATTORNEY

Many international inventors, IP owners or their local law firms ("foreign associates") have already filed a PCT application and need a competent US registered patent attorney to file a U.S. national stage application (also known as an "national phase application") at the United States Patent and Trademark Office ("USPTO").  This can typically be done prior to the 30-month date from most countries that are members of the PCT Convention.  We can also file within 12 months of the priority application under Paris Convention for those applicants from non-PCT countries. 

 

From a PCT application, two common routes exist for entering the USPTO: (1) 371 national stage (phase) applications and (2) 111(a) bypass continuations. It is noted that a bypass continuation-in-part allows new or different subject matter to be added, which may be relevant if the invention has further developed since the filing of the PCT application. 

 

If the International Search Report and Written Opinion are favorable and the patent prosecution highway (PCT-PPH) is available or if the same claims have been allowed by another country's patent office that has with a bilateral or multilateral treaty (Global PPH or IP5 PPH) with the USPTO, the PPH can be used for quicker service at the USPTO.  The USPTO does not have to follow or agree with the Written Opinion or other patent office. 

You can find an example listing of patent applications that Mr. Silver worked on at our patent listing page and client reviews on our patent page.  Did you know that we have a Request for Proposal (RFP) form that you can fill out to get a quick price quote?

Mr. Silver began his legal career at an intellectual property boutique law firm that handled a large volume of in-bound international work.  Here, he regularly helped convert PCT applications into US national stage patent applications and prosecute such cases to allowance (results cannot be guaranteed).  These US applications can be in the form of regular applications, patent prosecution highway accelerated examination, or some other form of accelerated examination.  

For inventors that want to bypass filing in their home countries first and file their first application in the US, we can help there as well.  

Did you know that if you are over the age of 65, you can petition for free to give your application special priority?  

With foreign patent attorneys or foreign law firm associates, silverlegal is open to different relationships whether driving the analysis and recommendations or reviewing their strategies and helping adapt those strategies to the U.S. patent law and rules.  We can use the translations of the specifications and non-English language references from our foreign associates. 

At the USPTO, once the application fees (filing, search and examination) are filed, there is no additional cost to request examination, which we will do unless you tell us otherwise. 

Forms

USPTO Forms are available on this website.  Below silverlegal has selected some forms that might be useful for you.

We hope the above is useful to you.  If any of the above links are or become broken, please let us know.

You need to have a signed engagement letter with silverlegal before submitting a Power of Attorney making silverlegal your attorney of record.  Request an engagement letter by entering your contact information and a brief message into the form below.  

Did you know that you can sign most USPTO documents with the USPTO's prescribed form of s-signature that depends on the context?  For example, you may be able to use the format / First Last /.  See this document for examples.  

If you are a US inventor and want to file internationally, we can help you with the PCT filing and arranging national filings around the world and overseeing the work of foreign associates.  We can work with international law firms right-sized for the stage of your company.

This is not legal advice.  All forms are provided AS IS with all faults and are typically used with applications filed on or after 12 September 2012  Use of these forms is at your own risk, and silverlegal or its attorneys do not take any responsibility for your usage.  Speak to an attorney about your specific facts and circumstances to know which form is right for your needs or if you need a custom document.