National Phase Of The PCT

In most instances the national/regional phase applications based upon the PCT must be filed by the 30th month from the earliest claimed priority date. In the EPO and several other countries or regions that deadline is 31 months from the earliest claimed priority date. A complete listing of the deadlines can be found on the Internet. Until fairly recently the deadline was 20 months in the U.S. and most other countries unless the applicant had filed a Chapter II demand by the 19th month. But that caused so many headaches that the rule was changed in most countries.

It is very important to appreciate that an applicant can file national phase before the end of the thirty month window. Indeed, I often file a national phase application as soon as I receive notice from the PCT examining authority saying that the claims are deemed allowable. I almost always file the national phase with a Petition To Make Special, using the positive Search Report or positive combined Search Report/Written Report as evidence of having completed a thorough patentability search.

National phase U.S. filings are straightforward. 35 U.S.C. 111(a) states that an applicant can file the U.S. national phase during the pendency (prior to the abandonment) of an international application which designates the United States without completing the requirements for entering the national stage under 35 U.S.C. 371(c). Of course, the U.S. national phase application will have priority back to the PCT filing, and any filing upon which the PCT was based. 35 U.S.C. 363 provides that "[a]n international application designating the United States shall have the effect, from its international filing date under article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office...." 35 U.S.C. 365(c) specifically provides that "[i]n accordance with the conditions and requirements of section 120 of this title,... a national application shall be entitled to the benefit of the filing date of a prior international application designating the United States".

As with all national phase filings, the U.S. national phase is time critical. The filing must be done while the PCT is still pending. 35 U.S.C. 120 requires that the U.S. national phase be filed before the patenting or abandonment of or termination of proceedings on the first application, which in this case is the PCT application. Under 35 U.S.C. 371(d), failure to timely comply with the requirements of 35 U.S.C. 371(c) "shall be regarded as abandonment... by the parties thereof...."

Can an applicant revive an unavoidably or inadvertently abandoned PCT application for the purpose of filing the U.S. national phase? Surprisingly, the answer is yes. An application is considered abandoned if the requirements of 35 U.S.C. 371(c) are not completed by the time period set in 37 C.F.R. § 1.494(b) and (c) or 37 C.F.R. § 1.495(b) and (c), the application is considered to be abandoned, see 37 C.F.R. § 1.494(g) and 37 C.F.R. § 1.495(h). Since the patent office considers a PCT application to be a U.S. non-provisional application (MPEP 1893.02), the same standards apply for revival. The applicant may file a petition to revive an abandoned application in accordance with the provisions of 37 C.F.R. § 1.137. See MPEP § 711.03(c)(C) "Unintentional Delay".

It is possible to file a continuation-in-part (CIP) application directly off of the PCT application. There is no need to file the national phase of the PCT, and then file the CIP off of the national phase. Thus, it is entirely possible that an applicant will file a PCT application, and then during the next year or two file a provisional disclosing new subject matter. The applicant can then file a U.S. national phase application off the PCT, but filing it as a CIP to include the subject matter of the provisional. Of course in that case the CIP application should also expressly claim priority to the provisional. MPEP § 201.11 specifies that the requirements are:

(A) Include an appropriate reference to the prior PCT application (either in the application data sheet (37 C.F.R. § 1.76) or in the first sentence of the Specification),

(B) Include an indication of whether the prior PCT international application was published under PCT Article 21(2) in English in the first sentence of the Specification regardless of whether benefit for such application is claimed in the application data sheet (if the continuing U.S. national application was filed on or after November 29, 2000),

(C) Have co-pendency with the prior PCT application, and

(D) Have at least one inventor in common with the prior PCT application.

The examiner is responsible for ascertaining co-pendency. As in all U.S. applications, a U.S. national phase application is co-pending with an international application if the prior international application was pending on the filing date of the subsequent U.S. national application. If the prior application is an international application, the examiner must ascertain (C) and (D) above by either examining the national stage application file of the international application, or by examining the international application file, or requiring applicant to submit sufficient proof that the international application was co-pending with the U.S. national (35 U.S.C. 111(a)) application claiming benefit under 35 U.S.C. 120. If the parent international application was not co-pending (i.e., abandoned or withdrawn), benefit under 35 U.S.C. 120 is not possible.

National phase foreign filings are quite expensive, usually between about US$ 5,000 and US$ 6,000 per country or region. Thus, if an applicant wants patents in 15 countries, the expenses associated with filing of a single patent matter can readily mushroom to over US$ 75,000. The vast majority of that expense is for out-of-pocket charges such as translation, and for government filing fees. Relatively little goes to the foreign filing agent, and almost nothing goes to the U.S. patent attorney.

Foreign filing expenses go even higher during prosecution. Most countries outside the U.S. charge annual maintenance fees during prosecution, of between about US$ 400 and US$ 800. In addition, responding to the office actions can easily burn another US$ 3,000 or US$ 4,000. Worse still, a single U.S. patent application is often divided into two or more applications by the foreign patent office (frequently because the U.S. patent attorney wrote way too many independent claims). That eventuality can readily double or even triple the total foreign prosecution charges. By the time all is said and done, an applicant can easily spend at least US$ 10,000 - $15,000 per patent per country.

Due to the high cost of foreign filing it is very common for patent attorneys to require significant advance payments for all but the most credit worthy clients, and in any event to refuse to file foreign applications unless there is specific written instructions from the applicant on where to file. A good practice is to provide the applicant with a listing of all available countries, and insist that the applicant either check off each country in which the filing is to occur, or separately list each of those countries in writing. A complete listing of all member PCT states can be found on the Internet. Unfortunately, even with such careful attention to detail some applicants still insist on "filing everywhere", or in some other manner indicate that they fail to appreciate the expense involved. In those cases the patent attorney may choose to go even one step further, by sending out an estimate of the expected charges and insisting that the designation of countries be accompanied by a check for the expected charge.

One way of reducing (or at least delaying) the expense of entering national phase is to file one or more regional patent applications. The cost reduction occurs for several reasons. A major reason is that the regional application can often be prosecuted in English. That avoids translations back and forth between English and the language of the foreign country. Another reason is that there is only a single prosecution for the entire regional application, rather than a separate prosecution in each of the individual national patent offices. Thus, instead of having to deal with 10 or 15 search reports and office actions, there may only be one search report and a relatively few office actions. Note that when the application is finally approved by the EPO or other regional authority, the application (or at least the claims) must then usually be translated into the national language of the individual countries in which the patent is to issue.

Another way of reducing national phase filing costs is to impress upon the applicant the fact that patents are not self-enforcing. In deciding where to file an application, the applicant should take into account the possibility that the patent may never issue in a given foreign country even though it may have already issued in the US. The applicant should also consider that any claims eventually allowed in a given foreign country may be severely narrowed by the foreign patent office, that the sales in the foreign country may be minimal, the costs of selling may be very high, and that the costs of enforcing the patent against an infringer may be unacceptable. Many countries do not even have a reliable legal system. But whether a determined applicant is receptive to the reality of these hurdles is another matter.