The 3 most important facts about PCT national phase you may not know

When a first PCT application enters the national phase, IP becomes a major issue for a company. Up until then, dealing with patents is a sporadic issue requiring very little attention. Once a patent portfolio becomes global, IP owners need to dedicate significant attention and resources to their patents on a monthly or even weekly basis.

Amazingly, we found that many IP owners are not familiar with the most important fundamentals of national phase entry, so here are the 3 most important things that you must know:

  1. Different countries have different national entry dates and some could be delayed: Most IP owners would know that the national phase entry typically happens in two chunks – a group of countries at the expiry of 30 months from the priority date and another group at the expiry of 31 months. However, it doesn’t end there. Here is a list of the most common filing jurisdictions where things aren’t as straight-forward as you may have thought and you can, in fact, buy a bit more time:

    United States30 months – failing to enter the national phase in 30 months doesn’t mean all is lost. Applicants are allowed to file a petition and argue that the deadline was missed unintentionally. As a common practice, these petitions are allowed even many months (or years) after the national entry date has been missed. Of course, this could be a problem in future litigation (it could be argued that it wasn’t an unintentional miss) but assuming that if the deadline is missed nothing can be done is plain wrong.Europe31 months – failing to enter on time doesn’t mean all is lost. The EPO will always issue a noting of loss of rights within about a month and the applicant may respond within 2 months, asking to enter late. This doesn’t come cheap and the applicant will need to pay 150% of the standard fee, but it would still work. So, the real drop-dead deadline is about 34 months from the priority date. After that, late entry is almost impossible.

    China – 30 months – BUT applicant can buy an extra 2 months for a small fee. So, really, 32 months.

    Japan30 months – BUT most of the cost is the translation of the application that can be filed a few months later!

    Canada30 months – BUT late filing up to 42 months from the priority date is available for a small fee.

  2. There may be a quick path for allowance: It is the ultimate goal of most IP owners to reach granted patents. Many of the IP owners are so focused on postponing costs that often easy opportunities to secure granted patents are overlooked and sometimes even lost forever.Part of the PCT process is the international search report, carried out by one of the participating patent offices. IP owners are often surprised to see an entirely negative search report and are told that this is common practice and that patents are often granted at a later stage. This is absolutely true.However, not all PCT search reports (ISRs) are entirely negative. Some indicate allowable claims. Allowable claims at the PCT stage open the door to accelerated examination and often a quick and easy allowance of the patent in many jurisdictions. Whilst this may mean bringing some costs forward, it also means significantly lower expenditure overall, higher company value following a grant and less administrative obligations (such as the obligation to report corresponding prior art to the USPTO). Applicants would be wise to consider any ISR that has allowable claims and seek advice from their patent attorneys as to what can be done. We can check for you if you have allowable claims (no cost involved).
  3. National entry costs can be significantly reduced:
    The costs of entering the national phase in various jurisdictions are calculated, individually, for each application. These costs are made out of a number of elements. We will hereby look at each of these elements:3.1. Your patent attorneys fees for completing the forms in their own jurisdiction and filing the application – this typically includes completing a set of forms by a trained paralegal, sometimes supervised by an attorney. Filing an application will normally require a few hours of work and the market prices range from $1,000-$2,000 for this.3.2. Your patent attorneys fees for preparing instructions to foreign associates to submit applications – This typically takes up to an hour. The common market prices range from $500-$2,000 for this.
    3.3. Official fees – you may think that these are fixed, but in most jurisdictions, they depend on the length of the application and surcharges for claims. Most patent firms will reduce the number of claims and prepare appropriate sets of claims for relevant countries. Note that the market price for preparing two alternative sets of claims is around $500-$1000 for most applications.

    3.4. Foreign associate fees for completing forms and translating applications – this is typically the most expensive part of national phase filing. IP owners who do not have direct relationships overseas feel unqualified to interfere with the process of choosing foreign associates and IP firms avoid the process of vetting and comparing foreign associates. As a result, most applicants can save an average of 30% by using a specialist company (such as Pekama) to source foreign associates and achieve better professional results nonetheless.

More about costs in my previous post.

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Zeev Fisher

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