Navigating the National Phase Entry under the PCT

The process of securing foreign patent protection through the Patent Cooperation Treaty involves two phases, namely, the International Phase and the National Phase. The International Phase begins when the PCT application is filed. The National Phase begins when the PCT application is filed with a contracting member and must be filed within 30 or 31 months from the earliest priority date. This is also known as the national phase entry (NPE).

How to identify the countries where patent protection is sought?

The first step in entering the national phase is to identify the countries where patent protection is sought. Please note that not all countries such as Taiwan which is NOT a contacting member of the PCT. As such, if you want to secure patent protection in these non-PCT countries, you must do so within 12 months of filing the patent application with the earliest priority date.

Here is a list of all of the countries which are a part of the PCT:

How to secure the correct documentation to file in a foreign country?

After identifying the countries where patent protection is desired, the inventor must comply with the filing requirements in that country. For example, a translation may be needed in foreign language countries.  Some countries require that the power of attorney be legalized and authenticated.  Since preparing these documents takes time, it’s important to get the process started early to avoid any rush charge or worse yet a failure to meet the deadline to file.

Each country has different requirements. As such, is important to retain a local patent attorney to help with the filing process in that country and to do so well before the due date.

When is the deadline to enter the national phase of the PCT?

The deadline to enter the national phase of the PCT is either 30 or 31 months from the filing date of the first filed application. After this date, a patent application can not be filed in those countries. As such, when you file the PCCT application be sure to set a reminder well in advance of the due date to enter the national phase.

How much does it cost to enter the national phase of the PCT?

The cost to enter the national phase of the PCT can be somewhere between $2000 and $8000. Most of the costs are due to translation costs and attorney time to prepare and file the national phase application.

However, the bulk of the cost incurred during the national phase will be the argumentation with the examiner in the foreign Patent Office. To minimize such costs, it’s advisable to first secure allowed claims in the local patent office first. These allowed claims are exported into the applications filed in the foreign patent offices. A request for consideration under the Patent Prosecution Highway can be made which would decrease the cost spent in acquiring a patent in those foreign countries.