Patent Baristas

In recent years, the USPTO has been very slow to process papers when moving from the international (PCT) stage to entry into the U.S. national-stage.   It’s common to have a year or more pass before the USPTO gets around to actually looking at the national-stage papers and mailing a Notice of Missing Requirements or an official Filing Receipt.

In a review of several dozen randomly selected US national-stage application, Carl Oppedahl has identified some factors within the applicant’s control can affect the number of months of USPTO delay.

In one example US application, the national-stage papers were missing the inventor’s Oath. The USPTO did not get around to looking at the national-stage papers until seven months later, at which time the USPTO mailed a Notice of Missing Requirements. The actual completion of the US national-stage requirements happened about two months after that when the missing Oath was filed. And then … the USPTO didn’t get around to looking at the Oath until ten months later, on January 9, 2009 when the official Filing Receipt got mailed.

If the applicant does not leave out any parts, the delays within the USPTO prior to mailing the official Filing Receipt are often in the range of four to eight months. If, on the other hand, the application is missing any items on filing the national–stage papers, then the delay within the USPTO can be substantial.

So, here is the practice tip from Carl:

When entering the US national stage, it is very much to the applicant’s advantage if every possible missing requirement is eliminated. Make very sure that the Oath was on file prior to the 30-month date. Make very sure that all the correct fees have been paid prior to the 30-month date. Try to give USPTO no possible excuse at all for withholding the official Filing Receipt. Stated differently, the applicant that leaves out something important from the national-stage papers is likely to see additional delays of a year or more (in addition to the already striking delays in USPTO ‘ s handling of national–stage papers even when nothing is missing) in progress or cue application toward the examining corps.

It might be argued that it doesn’t matter since the pendency for examination can be longer than a year or two anyway. Since the Examiners take up cases based upon when the national-stage requirements were met (and not based upon when the case was released to the Examining Corps) then the applicant is not prejudiced in when the Examiner takes up the case.

While there are plenty of art units with pendency that exceeds the delays in the USPTO’s handling of national-stage papers, some art units have shorter pendencies. In such an art unit, the USPTO delays in handling national-stage papers can cut into the substantive rights of the applicant, by delaying the eventual grant of the patent.

Thanks to Carl Oppedahl of the Oppedahl Patent Law Firm LLC for the practice tip.