Part I of III: Where to enter national phase?

You know the story: about 18 months ago you filed a PCT application designating over 130 countries and regions. Now national phase deadlines are fast approaching and you or your client needs to make a decision about which countries and regions should be kept alive by entering the national/regional phase.

Going into all countries would be nice, but even Bill Gates couldn’t afford to do that, so which ones should you choose?

We are constantly surprised that, even by this stage, many applicants haven’t given much thought about what they are hoping to achieve with their patent application. We’re even more surprised that applicants ask advice about this from someone (ie, us!) who doesn’t know their business, their technology or their market.

While we can’t give them specific advice, we can point out a few factors they might like to think about when making a decision.

“To Market, to Market…”

It seems obvious, but the first question an applicant should ask is “Where are my main markets?” For consumer goods, applicants might want to consider covering their local country (if they don’t already have an application on foot there), and then any other jurisdictions where they already make sales. For general consumer goods, the US is usually a good addition – for many products a US patent gives good bang for the bucks spent.

Applicants that manufacture and sell, say, mining equipment should be looking at where that equipment will be used; if there’s no iron-ore mining going on in the US at the moment, there’s little use in getting patent protection for an iron-ore testing rig there, even if it is the world’s largest (general) consumer market.

In short, applicants should look at where their products will sell, not where products in general sell.

Also, more emphasis should be placed on those markets with the potential for growth – and bearing in mind that patents last 20 years from filing in most countries, potential for growth should be considered from a long term perspective, not just what might happen in the next financial year or two.

More thoughts in a subsequent post…


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