How foreign national stage entries differ from US national stage
Most foreign IP offices have a two-stage process for filing patent applications:
- Initial filing of application;
- Requesting examination.
Unlike the USPTO, most foreign patent offices require a request for examination that is independent from the initial filing of the application. Depending upon the country, the deadline for an examination request may be months or years after the national stage deadline, though a patent applicant would have the option of filing a request for examination concurrently with the initial national stage filing.
Australia national phase entry
Australia has a 31-month national stage deadline.
PPH is available in Australia.
Canada national phase entry
Canada has a 30-month deadline. Late national stage entry into Canada may be extended up to 42 months by paying a relatively small reinstatement fee.
PPH is available in Canada.
China national phase entry
China has a 30-month national stage deadline. A PCT applicant may file a late national stage entry into China by the 32-month deadline with an extension request and the Chinese translation prepared and ready to be filed.
Translation requirements: Chinese translation of the PCT application must be submitted by the 32-month deadline. The name of the applicant must also be translated, so it would be prudent to use a translated name that is consistent with any prior patent filings in China by the same applicant.
The official excess claim is approximately USD $25 (150 CNY) per claim in excess of 10.
PPH is available in China.
Japan national phase entry
Japan has a 30-month national stage deadline.
Translation requirements: Japanese translation is due 2-months after the national stage entry date, and not the 30-month date.
A Power of Attorney is not required for the national stage entry in Japan, but may required when special representation becomes necessary (e.g., appeal or opposition).
PPH is available in Japan.
Europe national phase entry
A single application may be filed with the European Patent Office (EPO) to cover all European member countries. If you’re considering more than a couple of European countries, then filing a single application with the EPO may be more cost-effective than filing individual applications in each EU country. If and when the EPO patent application is allowed, the applicant can then decide the individual European countries in which the patent will be validated. Thereafter, yearly annuities must be paid to keep each validated patent in each European country alive.
Europe has a 31-month national stage deadline.
A power of attorney is not required for national stage entry in the EPO.
The EPO charges a hefty official fee for each claim in excess of 15, at roughly USD $300 per excess claim depending upon currency fluctuations. For a US application containing 25 claims, for example, the EPO excess claim fee would amount to roughly $3,000 in addition to the basic official fees. Therefore, it may be advisable to file a Preliminary Amendment concurrently with the EPO national stage application to reduce any significant number of claims over 15.
Limitations on patentable subject matter: business methods and medical treatment methods are not patentable in the EPO, so think of any potential claim amendments before filing in Europe, or at least before requesting examination.
PPH is available in Europe.
Korea national phase entry
South Korea has a 31-month national stage deadline.
Translation requirements: Korean translation is due by the 31-month deadline, but a 1-month extension is available.
PPH is available in S. Korea.
India national phase entry
The India IP Office has a unique ongoing requirement that will likely incur additional costs. In particular, the India IP Office requires patent applicants to provide periodic updates on the status of any counterpart applications. This requires the applicant’s patent attorney to check the family of related national stage applications to see if there any updates to report (e.g., such an Office Action in a particular country).
PPH is not available in India.
Mexico national phase entry
Mexico has a 30-month national stage deadline.
The Power of Attorney for Mexico must be signed before two witnesses.
PPH is available in Mexico.
National phase entry into countries without substantive examination
Some notable countries that do not substantively exam their national stage applications include:
- South Africa