A Patent Cooperation Treaty (PCT) or so-called international patent application is a useful mechanism by which to file a single patent application in order to obtain the grant of a patent in any one or all of the PCT contracting states. It is important to note that no international or ‘worldwide’ patent is ever granted – instead an international patent application provides a filing route that can be ‘converted’ into a number national and/or regional patent applications in the national countries or regions of interest.
An international patent application comprises an international phase and a national or regional phase. The conversion of an international patent from the international phase into the national or regional phase(s) must be completed within a set time limit, and this time limit is dependent on the country or region in question. This article explores the option to enter the national or regional phase(s) late, in certain countries or regions.
If you have a first patent application in your home territory, for example in the United Kingdom, then you may wish to obtain patent protection overseas.
Overseas patent protection can be obtained by following one of a two filing routes, for example, by filing a number of direct patent applications in the jurisdictions covering your key markets, or by filing an international patent application.
These filing routes must be commenced before the first anniversary of your first patent application, and permits the ‘back dating’ of the later patent application. This is known as a priority claim.
So, one of the initial questions you might be asking yourself may include: should I file an international patent application, or should I file directly in a number of jurisdictions overseas? This question is explored in our earlier article ‘International Patent Application vs. Direct Overseas Patent Filing’.
In summary, some of the key benefits in favour of filing an international patent application include:
- flexibility in providing additional time in which to select the countries or regions where patent protection is sought;
- reducing the costs for overseas protection early on (although costs for overseas patent will eventually be incurred at a later stage, and the overall cost may be greater); and
- delaying national/regional phase entry – thus keeping a competitor guessing as to where patent protection might be sought.
An international patent application must be converted from the international phase into the national or regional phase(s) no later than 30 months from the earliest priority date of the application, if priority is claimed (where no priority is claimed, the priority date is simply the filing date of the application). Certain jurisdictions allow for conversion by 31 months from the earliest priority date of the application, if priority is claimed. A table of the countries and regions covered by the PCT, together with their respective conversion time limit can be seen here.
Failure to enter the national and/or regional phase within the prescribed time limit will usually result in the international application ceasing to have effect, and thus will usually be deemed not to have the effect of a national or regional patent application. However, it is worth bearing in mind that a number of countries or regions allow for the late filing or ‘late entry’ of the national or regional phase.
A number of key countries and regions permitting late entry are discussed below:
Canada – if national phase patent protection is sought in China, then the normal deadline by which to complete the filing requirements is 30 months. However, on payment of a small additional fee for late entry, it is possible to delay entry of the national phase by 12 months, providing 42 months in total.
China – if national phase patent protection is sought in Canada, then the normal deadline by which to complete the filing requirements is 30 months. However, on payment of an additional fee for late entry, it is possible to delay entry of the national phase by 2 months, providing 32 months in total. This is often a useful strategy where additional time is required for obtaining a translation, which is required for national phase entry, although the translation must be filed by the latest of 32 months from priority.
Singapore – if national phase patent protection is sought in Singapore, then the normal deadline by which to complete the filing requirements is 30 months. However, on payment of an additional fee for late entry, it is possible to delay entry of the national phase by 3 months, providing 33 months in total.
New Zealand – if national phase patent protection is sought in New Zealand, then the normal deadline by which to complete the filing requirements is 31 months. However, late entry is possible where it is ‘unintentional’ and there has been no undue delay in entering the national phase. It is necessary to file evidence in support and providing reasons and this must be completed within 2 months of entering the national phase late.
United Kingdom – if national phase patent protection is sought in the United Kingdom, then the statutory deadline for entering the national phase is 31 months. However, national phase entry in the United Kingdom may be delayed by 2 months ‘as of right’, thus providing a total of 33 months. This is provided an extension for late entry is requested and payment of the appropriate fee is made.
Interestingly, it is also possible to delay national phase entry by a further 2 months, therefore extending late entry to 35 months, but such a further extension is discretionary, and will depend on the facts of the case. This further 2 month extension shall normally only be allowed if the failure to meet the 33 month deadline was ‘unintentional’. Although the evidence required in support of the failure being unintentional is not explicitly defined, such evidence should support the claim and should be more than just merely asserting that the failure occurred.
Europe – if regional phase patent protection is sought in Europe by way of an ex-PCT European patent application, then the deadline by which European regional phase entry must be entered is 31 months.
In a similar case to the United Kingdom, late entry of the European regional phase can be achieved, by utilising the so-called further processing procedure. Further processing is essentially a legal remedy that allows the applicant of a European patent application to correct a missed time limit set by the European Patent Office (EPO). Further processing requires the completion of the ‘omitted act’ and payment of any associated additional fee or the further processing fee.
When utilising further processing for late European regional phase entry, it is important to note that the additional fees are substantial, consisting of 50% of the fees that should have been paid by the 31 month deadline.
Failure to enter the European regional phase by the 31 month deadline shall result in the notification of a loss of rights in the application. This notification sets the deadline for requesting further processing, which expires two months from the date of the notification. In reality, the actual extension of time will be slightly longer, as the notification of a loss of rights will not likely be sent until a few weeks after the 31 month deadline has expired. It is therefore possible to enter the European regional phase up to 33 or 34 months from the filing date of the international patent application or from the earliest priority date of the application, if priority it claimed.