Building a strong patent portfolio starts with your filing strategy. For patent filing in the United State of America, you need to know the local patent office requirements. This guide will take you through all filing requirements and important stats in this country.

The following documents must be submitted when entering the national phase in the US of a PCT international application:

• • Copy of the International Application and the International Search Report (ISR).
  • English translation of the International Application (specification, claims and any text in the drawings).
  • Drawings
  • Amendments made under Art. 19 and/or 34, and its corresponding English translations (Applicant may elect not entering the amendments).
  • Certificate of Deposit of Biological Material (if applicable).
  • Sequence Listings (if applicable).
  • Power of attorney signed by the applicant (no legalization required)
  • Declaration signed by all inventors (no legalization required).
  • Certified copy of the foreign priority document (if applicable). An English translation is not required unless requested by the USPTO.
  • Information Disclosure Statement (IDS) disclosing to the USPTO all known prior art or other information that may be material to the patentability of the invention (if applicable). This includes prior art discussed in the specification and search results from foreign offices or intellectual property authorities.

The following documents must be submitted when filing a Paris Convention national application:

• • English translation of the application (specification, claims and any text in the drawings).
  • Drawings
  • Certificate of Deposit of Biological Material (if applicable).
  • Sequence Listings (if applicable).
  • Power of attorney signed by the applicant (no legalization required)
  • Declaration signed by all inventors (no legalization required).
  • Certified copy of the foreign priority document (if applicable). An English translation is not required unless requested by the USPTO.
  • Information Disclosure Statement (IDS) disclosing to the USPTO all known prior art or other information that may be material to the patentability of the invention (if applicable). This includes prior art discussed in the specification and search results from foreign offices or intellectual property authorities.

English translation of the foreign filing text or PCT international publication is required at the time of filing to avoid paying a surcharge fee. A simple but accurate translation is enough.

In the US, the time limit for entering national phase under PCT Article 22 or 39(1) is 30 months from the earliest priority date.

The time limit to file an application claiming foreign priority via the Paris Convention is 12 months from the earliest priority date.

Once the application is allowed, an issue fee must be paid within 90 days from the mailing date of the Notice of Allowance.

After the patent is granted, maintenance fees must be paid three (3) times during the term of the patent.

The patent term of a US patent is 20 years from the international filing date for national stage applications of a PCT or from the US filing date for conventional US applications with or without foreign priority.

Examination must be requested and paid for at the time of filing.

The Patent Prosecution Highway (PPH) is a procedure that speeds up the processing of a patent application, based on a favorable result obtained in participating intellectual property offices, with which a cooperation agreement has been reached.

Under the PPH program, when an applicant receives a favorable decision from a first foreign patent office that at least one claim is allowable, the applicant may request fast track examination of corresponding claim(s) in a corresponding patent application that is pending in the USPTO.

The PPH Request does not have to be submitted at the time of the initial filing but must be filed before substantive examination of the U.S. application begins.

Currently, there is no official fee required under the PPH program.

Payment of annuity fees are not required in the US during the pendency of the application.

A patent application must be filed at the United States Patent and Trademark Office (USPTO).

 The USPTO website is:

 https://www.uspto.gov/patents

National Stage of PCT:

To avoid abandonment of the application, the following must be provided not later than the expiration of thirty months from the priority date:

1. 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
2. The basic national fee.

If the application becomes abandoned, a petition to revive an abandoned application under an unintentional delay standard must be filed. If the petition to revive an abandoned application is filed more than two years after the date of abandonment, additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional must be provided.

Paris Convention:

A right of foreign priority may be restored upon filing a petition under an unintentional delay standard if the US application was filed after 12 months of the filing date of the foreign application but within 2 months after the 12 months period ended.

The following types of signatures are accepted when signing any document submitted to the USPTO:

• • Handwritten signatures
  • Electronic S- signatures (e.g., /John Doe/)
  • Electronic signatures with digital certificates or authenticity trails where the name of the person signing the document appears immediately below or adjacent to the signer’s electronic signature.

The specification, claims and abstract of a conventional application with or without foreign priority must be filed in DOCX format (.docx).

In contrast, the specification, claims and abstract of a national stage application of a PCT application can be filed either in DOCX format or in PDF format.

A patent assignment can be filed at any time during prosecution of the application and even after the patent grant.

However, when the applicant is a person other than the inventor(s), an assignment must be submitted on or before payment of the issue fee.

A certified copy of the foreign application must be filed within the later of: four months from the actual filing date of the application, or sixteen months from the filing date of the prior foreign application.

For a national stage of an international PCT application, if a certified copy of the foreign application is not filed during the international stage, the certified copy of the foreign application must be filed within the later of: four months from the date on which the US national stage commenced, four months from the date of the initial submission under 35 U.S.C. 371, or sixteen months from the filing date of the prior foreign application with some exceptions.

The USPTO is able to retrieve certain priority documents from other IP offices participating in the WIPO Digital Access Service (DAS) for Priority Documents via the electronic priority document exchange (PDX) program. The list of WIPO DAS participating offices and information concerning the scope of available priority documents are maintained by the WIPO. For successful retrieval, it is important that the foreign priority claim identify the country/office code and the foreign priority application number in the recommended format.

Alternatively, a physical copy of the certified copy of the priority application must be mailed to the USPTO within the time limits previously explained.

While the USPTO does not accept electronic filing of the certified copy of the priority document, an interim copy of the priority document can be filed electronically by the Applicant to comply with above-explained time limit requirements. The document must be clearly labeled as “Interim Copy”, should include the specification, and any drawings or claims upon which it is based, and must be filed together with a separate cover sheet identifying the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and stating that the copy filed in the Office is a true copy of the original application as filed in the foreign country (or intellectual property authority).

• Non-Resident Filings: Non-resident filings decreased from 342,024 in 2022 to 322,188 in 2023, a 5.8% drop. Most non-resident applications were direct (213,796 in 2023), while PCT filings fell sharply to 108,392, possibly due to changes in patenting strategies.
• Resident Filings: Resident filings fell from 269,586 in 2020 to 252,316 in 2022 but rose significantly to 275,897 in 2023, with direct filings making up the majority (249,472). This could indicate a growth in domestic innovation.
• Direct vs. PCT Filings: In 2023, direct filings totaled 463,268, outnumbering PCT filings, which declined to 134,817. This suggests a stronger focus on protection in the U.S. market.
• Total Filings: Total patent filings remained stable around 590,000 between 2020 and 2023, with a slight rise to 598,085 in 2023, reflecting a healthy patenting environment amid economic changes.
• Economic Context: Patent filing trends mirror U.S. GDP movements, showing resilience and a strong innovation landscape despite global economic fluctuations.

• Japan maintains the largest share (23% in 2023) but has experienced a gradual decline (-6% since 2020, -3% y-o-y).
• Despite India’s strong growth from 2020 to 2022, filings dropped sharply by 19% y-o-y in 2023, now representing just 3% of the total.
• Germany: Filing levels have been steady but show a slight decline in 2023 (-2% y-o-y).
• China’s filings remain stable, with modest y-o-y growth of 1% in 2023. However, it has shown a consistent 21% increase since 2020.
• Canada: Stable contributor (4% share), with flat growth y-o-y and minimal variation since 2020.
• South Korea: Demonstrated consistent growth since 2020 (+15%) and a strong 4% y-o-y rise in 2023. Now accounts for 13% of filings.