What’s the national phase entry deadline?
It seems a simple enough question, but we hear it often enough that we thought we’d address it.
The deadline by which you need to enter the national phase is either 30 or 31 months from the earliest filing or priority date associated with the PCT application. The choice of 30 or 31 month period is set by individual countries, and significant numbers of major countries use each period. For example, the US and Canada are 30 month countries, whereas Europe and Korea are 31 countries.
The 30/31 month periods are measured from:
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the filing date of the earliest patent application to which the PCT application claims priority under the Paris Convention; or
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the International filing date of the PCT, if no Paris Convention priority was claimed.
Unfortunately, this deadline is relatively firm in nearly all countries. If it is missed, the PCT application usually cannot enter the national stage. However, there are a number of countries that offer some relief in this respect.
CANADA
Canada offers a generous one year late-filing period. To use this, it is simply a matter of paying a small additional government fee at the time of filing, any time in the 12 month period following the 30 month deadline.
CHINA
In China, the 30 month deadline can be extended by two months upon payment of a surcharge. It’s important to note that, although the deadline is delayed by two months, it is necessary to file the translation with the rest of the national phase documents. Care should therefore be taken provide instructions early enough that the translation can be prepared in time. For a typical 30 to 40 page specification, a month’s notice is fairly comfortable
EUROPE
The European patent office allows revival of applications that have failed to enter the European regional phase by the 31 month deadline. However, this is not a cheap option, as the European patent office adds a surcharge to the official fees of more than 50%. Given how expensive the European official fees already are, this can make late filing into Europe an expensive proposition. However, the importance of Europe as a filing destination could make the additional expense worthwhile.
OTHER COUNTRIES
Elsewhere, it might be possible to revive applications that have missed the national stage deadline due to an omission or error in spite of all due care being taken by the applicant and its representatives. However, given the onerous standards applied by many countries, and the often subjective nature of the decision, this is not an option to be relied upon.
Indeed, some countries offer no revival right at all. Japan, for example, simply does not have any mechanism by which an application that has missed the national phase deadline can be revived under any circumstances.
LATE-FILING OF TRANSLATIONS
Assuming an English language PCT application, the majority of translation countries offer a period of one or two months (after either the national phase entry deadline, or national phase entry itself) within which the translation can be filed. We use these extensions ourselves quite frequently if we can’t get instructions early enough to comfortably complete the translation by the deadline. There’s an additional cost (usually $100-200) in most countries for taking this option.
Please contact us if you’d like more information about national phase deadlines.
Please let us know the fee structure for every country after entering the national phase.And how much would be the late fee charges for delayed apply for national phase for every country.
Hello Manoj
The post national phase costs and procedures are quite involved. Please contact us directly via our mail@inoviaip.com address and we will tell you what we can.
Regarding late fees, most countries don’t allow late filing without good reason. If you have a good reason for missing the deadline, you would need to investigate the cost and process for reviving the application in each country. That isn’t something we can help you with directly – we’d need to put you in contact with our agents. I can tell you that in many countries, it’s relatively expensive to attempt revival and even then there’s no guarantee of success.
As mentioned in the article above, please be aware that in some countries it is simply not possible to revive an application that missed the national phase deadline.
If you need any further information, please contact us at mail@inoviaip.com.
is it possible to extend the 30/31 month deadline simply by not taking priority from the earliest provisional application?
can you comment how this application US 2011/0230666 has entered in US even after 30 months.
Thanks in advance.
Hello Shamin,
It is possible to extend the 30/31-month national phase filing deadline by withdrawing one or more priority claims in a PCT application. However, please note that negative consequences can arise by doing so. Depending on the jurisdiction, your own earlier applications may become prior art against you. Additionally, publications or applications may become prior art that might not have been had you not withdrawn your priority claim. You must be aware of these risks before withdrawing any priority claim.
As for your question regarding US2011/0230666, please check to make sure you provided the correct PCT number. I believe you may have included an extra number, so I am unable to look up this particular PCT application.
If you have any further questions, feel free to contact us at mail@inovia.com.
Is it possible to enter an european patent application as a national phase application under a PCT International Patent Application in the 41st month after the priority date (claiming priority from a US Provisional Patent Application) claimed under the PCT International Patent Application on the ground that both the applicant and the legal adviser acting for the applicant were inadvertently and mistakenly under the impression that the 30 month period for entering the national phase was calculated from the filing date of the PCT International Patent Application (as opposed to the above priority date), and if so, what would be the procedure and costs involved?
Unfortunately, given that it’s 41 month after the priority date and 10 months past the regional filing deadline, it is too late for you to file this PCT application into the European Patent Office (EPO). You should have had an opportunity to revive and file your PCT application into the EPO shortly after the missed deadline. Upon missing the 31-month deadline, the EPO issues a communication informing the applicant of such. The communication prescribes a 2-month period for reviving the application upon payment of additional fees (which are quite substantial). However, if this “second chance” is missed, there is no further remedy for reviving your PCT application for the purpose of filing it with the EPO.
if a national phase due date falls on a Saturday or Sunday, does the weekend rule permit the national phase entry on Monday? Thanks
Hi Sue,
Please note that if the national phase deadline falls on a Saturday or Sunday, the national phase entry deadline rolls over to the next business day. Both, the PCT and Paris Conventions refer to and deal gracefully with non-working days and holidays. Note, however, that in Israel, Sunday is a working business day while Friday and Saturday are not.
It is also important to note that WIPO as well as many other patent offices around the world advise Applicants to always file the business day before as to ensure the rule interpretations and any force majeure circumstances do not get in the way of meeting deadlines.
Please see following link for PCT Regulations relating to the treatment of non-working days and the deadline being calculated based on local circumstances:
http://www.wipo.int/pct/en/texts/rules/r80.htm (see 80.4(b) and 80.5)
The Paris Convention also has a bit about deadlines falling on non-working days:
http://www.bitlaw.com/source/treaties/paris.html (See Article 4, paragraph C.(3)).
If you have any further questions, please feel free to send us an email at mail@inovia.com.