PCT National Phase Patent Application Filing Guide

Key Takeaways

• A PCT national phase patent application allows you to pursue patent protection in individual countries after filing a single international application under the Patent Cooperation Treaty (PCT).
• Entry into the national phase must occur within 30 or 31 months from the earliest priority date, depending on the country’s laws.
• Each jurisdiction has its own filing requirements, fees, translations, and examination processes, so early planning is crucial.
• Applicants can amend claims or make strategic adjustments before entering the national phase to align with local patentability standards.
• Choosing the right jurisdictions depends on factors like market potential, enforcement environment, and cost.
• Alternatives like a bypass continuation in the U.S. may offer strategic advantages in certain cases.
• Working with a patent attorney experienced in international filings can help avoid costly procedural errors and improve the chance of grant.

The PCT national phase application is a one-time submission to apply for a patent through member states of the Patent Cooperation Treaty (PCT). This streamlined process provides patent protection while adhering to each nation's individual requirements. It's backdated to the original date of filing.

How Can I Protect My Invention in Multiple Countries?

A patent is good in one country. If you want protection in other countries, however, you do have options. Using the Direct or Paris route, you can file individual applications through each country in which you would like a patent. If you have already filed in a country that is a Member State of the Paris Convention for the Protection of Industrial Property, then you have a one-year window from your original application filing date to do so. Each country with which you apply will honor the initial filing date.

You can also go the PCT route. Simply file an application directly through the initial country or within the one-year window allowed by the Paris Convention. Each of the contracting states will recognize that application.

What Is the Patent Cooperation Treaty (PCT)?

More than 150 countries have signed the patent cooperation treaty. This treaty allows you to file simultaneously in many countries with one application versus with multiple national patent applications. The national offices still decide whether to grant the application during the "national phase."

The PCT is typically used by:

• Large corporations
• Universities
• Individual investors

You must be a national or resident of a member country to file an international patent application. However, the application itself does not guarantee an international patent. In fact, this doesn't exist. Your application must enter the "national phase" to receive a patent in other countries.

PCT phases include:

• International Phase: File the international application.
• National Phase: Send the international application to other countries for evaluation under local patent laws.

An expensive process, the PCT route is generally more popular with large multinational corporations that regularly seek patents in many countries. It is also useful for entities with clearly identified global needs and/or international markets for a product. This process is rarely necessary for individual investors.

PCT Filing

First, file with a national patent office and meet all the formal PCT requirements. Submit the application in an approved language, and pay the appropriate fees. This filing is the same as applying to all PCT contracting states. If you have met the formality requirements, you will not have to adapt to the different national formalities.

Other filing details include:

• Only one applicant must be listed on the application.
• The World Intellectual Property Organization (WIPO), national patent offices, and the International Bureau all accept the international patent application and are designated PCT "receiving offices."
• In most cases, the application is filed electronically. WIPO software and web services can help validate and prepare your documents.
• Fees include the international filing fee, a search fee, and a nominal transmittal fee.

The processing time will differ between countries, as each is evaluating your application based on its laws, practices, and regulations.

Timeline and Filing Requirements for National Phase Entry

The national phase patent application must generally be filed within 30 months from the earliest priority date (the date of your first patent application). Some countries, such as Canada and the European Patent Office (EPO), extend this period to 31 months, but late entry may require paying additional fees or may not be allowed at all.

When entering the national phase, applicants must:

• Submit translations of the application into the official language(s) of each jurisdiction (e.g., Japanese, Chinese, German).
• Pay national filing fees, which can include basic filing, examination, and designation fees.
• Appoint a local patent agent or attorney, as many patent offices require local representation.
• Submit amendments or claim changes if desired, typically allowed at the time of national phase entry.

Failing to meet these requirements within the deadline often results in loss of patent rights in that country.

PCT International Search

To find out if your invention is patentable in PCT contracting states, an International Search Authority (ISA), as well as the national office, will evaluate your patent application. All international applications will be subject to the International Search, the results of which are closed for 18 months. During this time, you can make amendments to your application as well as meet with the ISA to discuss its findings.

PCT International Publication

Eighteen months after the first date of filing, the application and the International Search results will be published. You can find PCT applications on PATENTSCOPE, a searchable database with language and search tools. You can withdraw the application before this time if you do not want to publicize the application details or ISA commentary.

PCT National Phase

Once the PCT process is complete, and 30 months after the initial filing, you can apply for patents directly through the countries of your choice. You must meet each one's individual requirements, pay its fees, and file application translations, if applicable. The national offices decide whether to approve your patent. Their decision is made easier by having the international search and preliminary report already completed.

Costs and Budgeting Tips

The cost of entering the national phase varies widely by jurisdiction and can range from $2,000 to $10,000+ per country, depending on translation costs, attorney fees, and government charges. To manage costs:

• File only in strategically important countries.
• Use professional translation services to avoid costly errors.
• Amend claims early to reduce prosecution costs later.
• Bundle filings with a global IP firm to benefit from volume discounts.

Bypass Continuation vs. National Stage in the U.S.

In the United States, applicants entering the national phase have two primary routes:

1. National Stage (35 U.S.C. §371):
   • Directly enters the U.S. national phase based on the PCT application.
   • Maintains the original PCT filing date and preserves international priority.
   • Often more cost-effective but limits claim amendments and procedural flexibility.
2. Bypass Continuation (35 U.S.C. §111(a)):
   • Treats the PCT as a priority application and files a new U.S. non-provisional.
   • Provides greater flexibility for claim amendments and prosecution strategy.
   • Useful for substantial claim revisions or adding new matter.

Choosing between these options depends on your patent strategy. A bypass continuation can be advantageous when seeking broader claims or responding to unfavorable international search results, while the national stage is often faster and more economical.

Strategic Considerations Before Filing

Before initiating national phase entry, applicants should evaluate where commercial value or manufacturing activity is most likely. Patent protection can be costly, and not every market will justify the investment. Key considerations include:

• Market size and potential – Prioritize jurisdictions where your product will be sold or manufactured.
• Enforcement strength – Choose countries with robust intellectual property enforcement.
• Competitor activity – Protect innovations in regions where competitors operate.
• Regulatory environment – Some industries (like biotech or pharma) require IP protection in specific regions.

Additionally, you can refine claims before national entry based on prior art found during the international search or written opinion. These strategic refinements can increase your likelihood of grant and reduce prosecution costs later

Where Can I Find Out More About PCT?

The PCT's Applicant's Guide, the PCT Newsletter, and PCT Highlights are online in multiple languages. To file an international patent application, speak with an experienced patent attorney or your regional patent office.

Frequently Asked Questions

1. What is a PCT national phase patent application?
   It is the stage where an international PCT application transitions into individual national applications, allowing patent offices to examine the invention under their local laws.
2. When is the deadline to enter the national phase?
   Generally, you must file within 30 months from the priority date. Some jurisdictions allow 31 months.
3. Can I amend my claims before entering the national phase?
   Yes. Many applicants amend claims to address prior art or align with local requirements before filing.
4. What is the difference between a bypass continuation and national stage in the U.S.?
   A bypass continuation is a new U.S. filing claiming priority to the PCT and offers more flexibility. National stage directly continues the PCT and is often cheaper and faster.
5. How many countries can I file in under the PCT?
   Over 150 member states participate in the PCT system. You can choose as many as you like, but you must meet each one’s national requirements and pay its fees.

If you need help with the a PCT national phase application, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf companies like Google, Menlo Ventures, and Airbnb.