What is the PCT national phase?
A PCT application extends the deadline for filing utility patent applications in both the US and foreign countries. That extended due date, called the national stage deadline, is either 30 months or 31 months from the earliest filing date known as the priority date. By this extended filing deadline, a PCT applicant must enter the “national stage” or “national phase” of each desired member country by filing an individual national stage application in each country or region. If you have filed a PCT application, plan ahead and start thinking about which countries to pursue in advance of the national stage deadline. For US inventors and companies, this post is a helpful guide on key factors specific to each foreign patent office.
Unlike the USPTO, most foreign IP offices have a two-step process for filing utility patent applications:
- initial filing of application (national stage entry); and
- requesting examination (which may be after national stage entry).
The second step of requesting examination is what distinguishes foreign patent offices from the USPTO. Depending upon the country, the deadline for requesting examination may be months or even years after the national stage deadline. This means that a PCT applicant can budget for foreign filings by first covering the upfront costs of initial national stage filings. Significant ongoing costs of prosecution may be deferred by waiting to request examination.
Let’s look at the differences for entering the PCT national phase into various member countries.
Australia national phase
Australia has a 31-month national stage deadline. Since a translation would not be required for PCT applications originally drafted in English, nationalizing in Australia tends to be cheaper for US applicants.
Patent Prosecution Highway (PPH) is available in Australia.
Canada national phase
Though 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. Avoiding the need for an English translation also makes national stage entry in Canada less expensive for US applicants.
PPH is available in Canada.
China national phase
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. A Chinese translation must be filed by this 32-month.
Translation requirements: 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
Japan has a 30-month national stage deadline, but it is possible to file a last minute national stage application in Japan without a Japanese translation.
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 (EPO) national phase
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
South Korea has a 31-month national stage deadline.
Translation requirements: Korean translation may be filed 1 month after the Korean national filing date. So, you can think of the Korean translation date as approximately the 32-month mark assuming national stage is entered at the 31-month deadline. In this respect, translations for Korea and Japan will be due approximately at the same time around the 32-month mark.
PPH is available in S. Korea.
India national phase
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
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.
US national phase
The US has a 30-month national stage deadline. Unlike other patent offices, the USPTO requires each patent applicant to disclose known prior art. This is an ongoing duty throughout the application process that ends when the US patent is granted. See this post on how the US national phase differs from other countries.
PCT countries without substantive examination
Some notable countries that do not substantively exam their national stage applications include:
- South Africa
Need help with PCT national stage entries into foreign countries?
Initial filing costs for PCT national phase entry will vary depending upon the size of the PCT application (translation costs) and number of claims. For a rough ballpark of national stage filing estimates, see these approximate cost estimates for national stage initial filings.