Perhaps the most common, and most important, question we field here at inovia relates to when the PCT application needs to enter the national phase (or stage; the terms are interchangeable). The national stage filing deadlines occur 30 or 31-months from the earliest priority date claimed by your PCT application.
The 30 or 31-month deadlines are calculated from either:
- the filing date of the earliest patent application to which the PCT application claims priority under the Paris Convention; or
- the International filing date of the PCT, if no Paris Convention priority was claimed.
It is at this time that you’ll need to file your application into the countries or regions where you wish to pursue patent protection. Once filed into your desired countries/regions, the respective patent office will examine your PCT application.
Quite often, US-based applicants hope to wait until a favorable decision is reached in the USPTO before deciding whether to pursue international patent protection. Unfortunately, the current patent office backlog usually means that the US application is still pending when the national stage deadlines approach. Other applicants simply need more time to obtain funding.
As a result, our clients often ask whether they can delay national stage filing and what happens if they miss this deadline.
Unfortunately, the national stage deadlines for most countries are inflexible and missing these deadlines will jeopardize your chances of allowance. Picture your national stage application, your PCT application, and your priority application all connected by a chain. That chain allows the national stage application to claim priority to the earliest filed application. Breaking that chain by failing to meet your national stage deadlines means that your earlier applications can now be cited as prior art against you. This is why timely filing of your PCT application at the national stage is vital.
Luckily, some countries do allow for late filings.
Applicants love the Canadian Patent Office, which allows late filings of up to 12 months after the 30-month national stage deadline for a small fee. You simply pay the fee retroactively when you do decide to file.
China’s 30-month filing deadline can be extended by 2 months upon payment of an additional fee.
The EPO does allow for filings of applications that have missed the 31-month national stage deadline. However, late filing is not as simple as including an additional late charge. The application will need to be revived by filing a petition. Additionally, reviving your application will increase your filing fees by over 50%. Europe is already an expensive filing destination, so we strongly recommend that our clients file their PCT applications by the 31-month deadline.
Brazil is a country that is increasing in popularity as a national stage filing destination. Brazil is a 30-month country that requires translation of the application into Portuguese. Although the translation of the specification can be submitted up to 2 months after the filing upon payment of a fee, the claims must be translated at the time of filing. Therefore, you need keep this in mind when providing instructions and allow sufficient time for the translation of the claims.
South Korea is a 31-month deadline country, so that provides some extra time for applicants to make their filing decision for that jurisdiction. However, there is no translation extension available, so you should send your South Korea filing instructions at least 1 month prior to the filing deadline, even more if you have a lengthy application to be translated.
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 to revive an application that has missed the national phase deadline.
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 stage entry deadline, or national stage entry itself) within which the translation can be filed. We use these extensions ourselves if we don’t receive 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.