Some Considerations For National Stage Entry In Foreign Jurisdictions

Posted Sunday, November 29, 2015.

When attempting to obtain patent protection outside the United States, the path taken is often that defined by the Patent Cooperation Treaty (PCT). The process begins when an “international application” (also known as the PCT application) is filed, either directly with the World Intellectual Property Organization (WIPO) or at an international Receiving Office (RO), of which the United States Patent and Trademark Office is one. Once the PCT application is filed, the applicant may then enter the “national stage,” where examination by individual national patent offices is requested.

I’ve previously blogged about the process of obtaining patents overseas here: Process for Prosecuting Patents Overseas and here: Patents Outside the United States. With respect to entry into the national stage, which is the point at which the applicant requests examination by particular national patent offices, there are several important considerations.

While one benefit to the PCT process is that the applicant is able to delay payment of the fees for examination to national patent offices for up to 30 months (31 months in Europe) from the date of the first filing (including provisional applications), it is important not to wait until the last minute to initiate the foreign filings. There are a number of considerations for filing in foreign patent offices which may not be of concern when filing in the United States.

For example, most national patent offices restrict those who can represent applicants and file applications on their behalf. The European Patent Office (EPO), for example, only allows entities who have their primary place of business in an EU member state to represent applicants in proceedings before it. Those representatives must also be EU nationals. This means that it is necessary for your U.S. representative to work through an EU firm to get a patent application through the EPO. Puget Patent has established relationships with several such EU firms. However, in different foreign jurisdictions, it may be necessary to find an agent to file the application in the local patent office.

Another consideration relates to filing fees. Foreign agents often request payment by international wire transfer, so if initiating a wire transfer is something that will take an applicant a few days to organize, planning ahead makes sense.

Further, most foreign patent offices will require a translation of the application into the official language of the country. For U.S. applicants, translations are not needed in Europe, Canada, Australia, India etc., but in countries such as Mexico or Brazil, a translation will be necessary. Ordering and receiving such a translation usually takes some time so this process must also be started well in advance of the 30-month deadline.

An unusual requirement of patent offices other than the U.S. may be that an original “in ink” copy of an assignment or power of attorney document may be required. In such cases it is not sufficient to sign the document and fax or send an electronic copy. These documents must be mailed to the foreign agent, adding some time to the process. Again, this provides another reason not to delay the national stage entry.

Other offices may require the applicant to provide copies of any references which were cited by the International Search Authority (ISA) on the International Search Report. These are, of course, easily obtained via the Internet, but in some countries the patent office wants them filed concurrently with the application rather than obtaining the copies themselves.

Another consideration is shifting exchange rates, which may alter the estimated cost of filing in an overseas patent office between the time the estimate is prepared and the application is actually filed. Also, in some countries the applicant is granted further time before a formal request for examination must be made, which delays the time before the fee for the formal examination is due. Speaking of fees, as I wrote in the previous blog posts, an applicant should not forget about maintenance fees. In the US, we only pay maintenance fees once a patent issues, but in many foreign jurisdictions maintenance fees are due even while the application is still awaiting a first examination. (As I’ve previously written, the cost of obtaining a patent in the United States is a relative bargain when compared to the fees levied by other national patent offices.)

Last, an applicant who is considering patents outside the United States must remember that while nearly all countries are signatories to the Patent Cooperation Treaty, not all are. The most notable countries who don’t participate are Argentina and Taiwan, where an application must be filed much sooner than 30 months after filing in the United States. If you are up against the 30 month deadline for PCT, it’s likely already too late for Argentina or Taiwan.

Obtaining a patent outside the U.S. is very beneficial when your product has worldwide appeal. The process is intricate, although initiatives like the Patent Cooperation Treaty and the Patent Prosecution Highway help simplify it a bit. Primarily, though, proper advance planning is needed. Waiting until the end of the 30-month international phase can be costly and difficult.

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