Delaying the costs associated with national stage entry

For even the largest and most successful businesses, patent decisions are all about compromise. No one files in every country in the world, no matter how much money they have or how important the invention.

For smaller companies and individual inventors, the compromises are often more severe due to the usual cash-flow issues. For those with Patent Cooperation Treaty (PCT) applications, the impending 30/31 month deadline can seem like an insurmountable hurdle, formed from piles of invoices for national stage entry.

There are, however, a couple of techniques that can be used to extend the time by which you need to pay some or all of the costs of national stage entry.

Country-by-Country Tips

Canada offers probably the best value you can get for your extension dollar. By paying a small fee in addition to the usual charges, you gain a further 12 months within which to enter the national stage. To obtain this extension, you need do precisely nothing – just make sure you take the required steps to enter the national phase within 42 months of the priority date and pay the additional fee. inovia doesn’t charge anything extra for taking this option.

China offers a little-known two-month extension for a modest additional charge. As with Canada, you don’t need to do anything special to get the extension – the additional fee is simply added when you enter the national stage up to two months late. Bear in mind, though, that you still need to lodge the translation when entering the national stage, so you realistically still need to provide instructions a minimum of three weeks before the deadline.

Europe is a tricky one. There are a few techniques for reducing costs at national stage entry, but it is beyond the scope of this article to go into them in detail. One technique is to avoid paying excess claims fees at national stage entry. In the weeks following European regional phase entry, the EPO will issue a communication establishing a six-month period within which the claims can be amended, and any required excess claims fees paid. Even if you maintain more than 15 claims and therefore need to pay excess claims fees, not paying at regional phase entry delays payment of those fees by over six months.

Examination

For countries where examination needs to be requested separately from national stage entry (e.g. Australia, Korea, Canada and many others), make sure you delay this step. In some cases, examination can be delayed by months or even years, which is handy if you are not in a particular hurry to get a granted patent.

For more information on country-specific national stage entry requirements, including which have deferred examination requests, please download our PCT national stage entry guide.

 

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