inovia's Foreign Filing Blog

Top national stage countries for 2009, by industry

In this earlier blog post, we ranked our top countries for 2009.  We've also broken down the top countries by the Industry type of our client base.  The rankings come out as follows:

Mechanical / Engineering:

1. Brazil

2. Europe

3. China

4. Australia, USA

 

Electrical / Electronics:

1. China, Japan

2. Korea

3. India

4. Australia

 

Pharma / Biotech:

1. Europe, Japan

2. Australia

3. Canada

4. India

 

Chemicals / Materials:

1. China, Europe

2. Canada

3. Australia

4. Brazil

 

IT / Software / Media:

1. China

2. Europe

3. India

4. USA

5. Japan, Korea

 

Business / Finance:

1. China

2. USA

3. Europe

4. Australia, India

 

 

PCT vs. Paris

PCT versus the Paris Convention

While I'm a firm advocate of the PCT (well, I would be wouldn't I?), direct Paris Convention filing will also have a place in the filing strategies of many applicants.

Some advantages of the PCT are:

• A single application can be filed in the applicant's home country, in the local language.

• It delays (by up to 18 months) the need to make a firm decision about the countries where patent protection is to be pursued.

• The PCT International Search Report (ISR) often can help applicants determine how likely it is that the application will proceed to grant in individual countries after national phase entry.

• Even accounting for the additional cost of the PCT application, slightly lower costs for national phase entry as compared with direct filings means the PCT route for more than a couple of countries can actually be cheaper overall.

That said, there are a few advantages that only direct filings can offer:

1. While many applicants want to delay the costs associated with examination and grant of a patent (and the PCT offers this), sometimes fast grant of the patent is desirable. The sooner an application is filed in an individual country, the sooner it can be examined. Direct filings can often proceed to grant significantly faster than those going by the PCT route.

2. Universal coverage: the PCT covers over 130 countries, including the vast majority of major commercial destinations. However, there are a few notable non-PCT countries, including Taiwan and Argentina. If you want coverage in those, it will be necessary to file directly using either the Paris convention (or - as may be the case with Taiwan - an equivalent bilateral agreement with the applicant's country, assuming one exists).

3. Completely different and tailored content for each country. With the PCT, applicants must draft a single patent specification that takes into account the different legal requirements of all countries. While formality issues aren't such a problem, there may be situations where an applicant would prefer different content to file in, for example, Europe and the USA. The sorts of problems that such different content would seek to avoid tend to be industry specific; for example, different approaches to information technology and pharmaceutical patents in certain jurisdictions may make it difficult to provide a "one size fits all" specification that is perfectly tailored to all jurisdictions.

In essence, in many cases it pays to think of PCT and Paris Convention applications as being complementary rather than alternative approaches to foreign filing.

PCT National Phase Entry Deadlines

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:

• 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.

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.

Foreign filing into country "X"

Which country / countries should we add next to our pctfiler network?  We're looking for your feedback.

Today we can handle our clients' PCT national stage entry and European validation in 60+ countries (see the list of countries covered by our global agent network).

Which PCT contracting states should we add next, based on your (or your clients') foreign filing needs?

Our shortlist presently includes:

• ARIPO
• UAE
• Egypt
• Chile
• Thailand
  

 

Translation quality for foreign filing

While we presently accept externally-prepared translations in principle, we sometimes find that translations we receive from clients are not of high quality.

Additional costs are then incurred in having our agents "fix" the translation.  Worse (if it's not bad enough), the client may end up paying the full cost again to have it translated from scratch - not ideal if they've already paid for the first one!

You should be able to say the following about a patent translation:

1. It is a true and accurate translation of the source document.

2. The translator is a native speaker of the destination language.

3. The translator is technically skilled in the relevant technology.

4. It takes into account any specialist legal language used by patent attorneys in the destination country, including idiomatic translation of special technical or legal words used in the source document. 

5. It satisfies local formal requirements relating to character set, font size, spacing, margins and so on.

In our experience, translations prepared by anyone other than a specialist patent translator run the risk of significant deficiencies in some or all of the above areas.

For example, it is rare that even a person very skilled in the relevant technical field who writes well in the destination language and has a good understanding of the source language will have any knowledge of the legal language issues, or of the formalities.

The service level agreements we have with our agents require them to satisfy all the above criteria. We also require that the translation either be prepared by a patent attorney or comprehensively reviewed by a patent attorney prior to filing.

In virtually all countries, it is the translation that forms the basis for your rights. Any weakness or deficiency in the translation is a weakness or deficiency in the resultant protection - and worse, it's one you won't know about until it's too late.

If you have thoughts about translations (and particularly the importance of quality), we'd love to hear them. 

Stage versus Phase?

Yes, we know it's officially known as the PCT National Phase... inovia was founded by an Australian patent attorney, after all.

Yet many patent attorneys, agents and applicants in the US refer to it as "PCT national stage entry".  We've used 'stage' on our website and in other materials because many of our (mostly US-based) clients say 'stage'.  So, we're having an internal debate about this choice and thought we'd open it up to our blog readers...  what do you say?  Should we use 'phase' or stick with 'stage'?