PCT deadlines

After you’ve filed a PCT patent application, what are the next PCT deadlines?  Your next steps are to decide on which countries you want to pursue patent protection in, and on what makes business sense within your budget.  If you need more background on what a PCT patent application is, take a look at my blog post PCT Patent Application Basics.  If you’re preparing to file, take a look at my post on what information is needed for any patent application. For details on relevant PCT deadlines, read on.

What’s next in the PCT Deadlines?

The first date to keep in mind, with a PCT patent application or any other patent application, is your earliest priority date for your application.  That earliest priority date might be the date you filed your PCT patent application, but it might be an earlier date that you filed a national patent application if you claimed that date in your PCT patent application.  For instance, if you filed a US provisional patent application, or a US non-provisional patent application, and you properly filed your PCT patent application within 12 months of that US filing, the date of the US filing is your priority date.

Measuring from your priority date, you have 30 months to file in most countries (or regional patent offices) for protection in those countries or regions, and for many countries it is 31 months.  That filing is referred to as entering the “National Phase” or “nationalizing” a patent application.  If the PCT filing was your first filing, the PCT deadlines are 30 months (or more for some countries) in which to enter the National Phase.  If you filed a US or other national application first, and filed the PCT application after that, we measure the 30 or 31 months from the date of the US (or other national) application.  Keep in mind that most countries now use a “first-to-file” system, so you don’t want to lose your priority date – see my post on First To File And Takeout Food to learn more.

What do you have to do?

You have a few key tasks during the “International Phase” – the time when you’ve filed a PCT application, but before the PCT deadlines at 30 months are approaching.

Where do you want patent protection?

First, you need to decide which countries or regions are important to you.  You should generally only file in ones that make business sense.  How big is the market for your invention in a given country?  Is that country important to your business?  For most companies and inventors, the US should be on your list, as the world’s largest economy and market.  Depending on the invention and your business model and goals, other countries may be on your list to pursue patent protection.

What’s your budget?

Second, you need a sense of your total budget.  To enter the National Phase in each country or region, there are costs: filing fees for each country, and attorney’s fees, and for some countries, translations are required (which can be expensive).  Later, after getting patents issued, there are maintenance fees to pay, and you should consider that in your budget and planning for which countries you want to pursue a patent in.

What are the PCT deadlines for certain countries?

The 30-month or 31-month deadlines for entering the National Phase, for large-economy countries that are usually at the top of anyone’s list for pursuing patent protection, are:

  • The US: 30 months
  • The EPO, for all EPO countries (mostly, the EU countries): 31 months
  • China: 30, but you can bump it out to 32 months by paying extra
  • Japan: 30 months
  • United Kingdom: 31 months
  • Germany: 30 months
  • Canada: 30 months, but you can pay a small fee and file up to 12 months later, that is, 42 months
  • India: 31 months
  • Israel: 30 months

You can see the full list of countries and PCT deadlines at this WIPO page on time limits.  Note that only a very small number of countries have National Phase deadlines other than 30 or 31 months: Bosnia and Herzegovina gives applicants 34 months, and the National Phase PCT deadlines for Luxembourg, Tanzania, and Uganda could sneak up on you, with only 20, 21, and 21 months, respectively.

What does it cost to enter the National Phase?

The costs vary for each of these countries.  First, you will have to pay your attorney, who will work with local counsel in the countries or regions you’re interested in (this is not a DIY project).  If your application does not need to be changed, and you only have to pay to have the relevant paperwork prepared and filed with your patent application materials, then, as a guide, filing fees for the US might be about $1000-$2000 (depending on your “entity size” – see my post about microentity status), for the UK about $1000, and for the EPO about $5000.  Note that for some EU countries you can enter the National Phase directly, but for some including France and Italy you must go through the EPO.  If you haven’t filed a patent application, have a look at my post on patent application costs.

Be aware, about the EPO, that it’s possible or likely that an EPO filing could be converted into a “Unitary Patent” under a new treaty expected to come into effect in December 2017, under which you’d be able to have a single patent valid across participating countries, rather than a patent in each of the EU-area countries you’re interested in, which would likely be at a lower cost.  But that is not yet enacted or certain.

Finally, keep in mind that for other countries, that don’t allow a patent application to be examined in English, there will be translation costs, which may need to be paid at the time of filing, or can be postponed in some countries.

Any questions?

Do you have questions about filing a PCT patent application, or about next steps with a PCT or National Phase application you’ve filed?  Call me at 617-340-9295 or email me at my Contact Me page.  Or, find me on Facebook, Twitter, Google+, LinkedIn, Google Local, or Avvo.


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