The national phase of the PCT starts when you file your PCT application in a country that has signed up to the Patent Cooperation Treaty. Currently, more than 150 countries are a part of the Patent Cooperation Treaty.
What are the top 10 countries where inventors file a national phase patent application?
The top countries for filing national phase patent applications were:
- United States
- Republic of Korea
What is the patent process during the national phase of the PCT?
After you’ve filed your PCT application and entered the national stage, it’s time to start planning for your patent in each country (or jurisdiction) to which you want protection. This can be a long process, but knowing how to prepare, and getting help from an expert, is key. Here are some general steps in the patent process during the national phase of the PCT.
Most foreign countries have a multi-step patent process.
First, you file a patent application which gives your patent application pendency in the foreign country.
Second, you need to request an examination of your patent application. Your patent application will not be examined until you do so. In the USPTO, when you file a nonprovisional patent application, your patent application will be examined on a first-come-first-served basis.
When should you request an examination during the national phase of the PCT?
A request for examination should be made as early in the process if you are actively marketing your invention in the foreign country. Sometimes, distributors will require you to secure a patent in a foreign country before they will start to distribute your product. In that case, you may want to request examination as early as possible.
If possible, you should request examination as late as possible to save costs, as discussed below.
What are the patent costs during the national phase of the PCT?
The patent costs during the national phase of the PCT are:
- the initial filing of the national phase patent application,
- the examination cost to have the national phase patent application examined, and
- the yearly annuity or renewal fees.
What is the cost of the initial filing of the national phase patent application?
The filing of the national phase patent application will cost on the low end a few thousand dollars upwards to $10,000. The bulk of the costs will in the cost to translate your patent application into the local language and any other documentation needed such as an apostilled power of attorney.
Translations and the documentation take about 1 to 2 months to coordinate. As such, tell your patent attorney early which countries you want to file a national phase patent application in. Otherwise, you will be paying an additional 20% for rush charges.
What are the examination costs for your national phase patent application?
The patent prosecution costs in any single country can be in the tens of thousands of dollars. Why? You will be hiring two patent attorneys. Your U.S. patent attorney and a patent attorney in a foreign country. You want to minimize the communication between your U.S. patent attorney and the foreign patent attorney, if possible.
One way to minimize patent costs is to request that your national phase patent application be examined under the Patent Prosecution Highway program.
Under the PPH, many patent offices have agreements with the United States Patent and Trademark Office to grant the allowed or granted claims in the U.S. patent application in their country. Applications filed under the PPH have a high rate of allowance. Plus, they are granted much sooner than other non-PPH applications.
How much are the annuity or renewal fees during the national phase of the PCT?
Many foreign countries require applicants to pay an annuity or renewal fee every year. These will cost you a few hundred dollars up to a few thousand dollars depending on the country and how long your patent application has been pending.
What is the deadline to file a national phase patent application?
The deadline to file a national phase patent application under the PCT is 20 months, 30 months, or 31 months depending on the country.
Here is a full list of countries and their deadlines.
|Two Letter Country Code||Country||Time Limit|
|AE||United Arab Emirates||30|
|AG||Antigua and Barbuda||30|
|AP||African Regional Intellectual Property Organization||31|
|BA||Bosnia and Herzegovina||34|
|EP||European Patent Organisation||31|
|IR||Iran (Islamic Republic of)||30|
|KN||Saint Kitts and Nevis||30|
|MD||Republic of Moldova||31|
|OA||African Intellectual Property Organization||30|
|ST||Sao Tome and Principe||30|
|VC||Saint Vincent and the Grenadines||31|