The 10-point checklist for nationalizing your PCT applications
Over 50 years ago, inventors and applicants from across the globe started using the Patent Cooperation Treaty, commonly known as PCT, as an effective way to protect their inventions in 153 states. After all this time, we still cannot help but ask ourselves if having an international application will be enough to lead to a patent in most jurisdictions. The answer is simple: only if you enter the national and regional phases of your PCT application. Take a closer look at our top 10 rules that your company or IP law firm should follow.
1. Monitor your deadlines
The 30 and 31-month deadlines for nationalizing your PCT applications should be a top priority. Calculated from the priority date, these are always crucial for the filing stage, so it is best to use an IP management system. There are some excellent options on the market, and DIAMS iQ is undoubtedly one of them. Do you need to nationalize your PCT applications in a smooth and centralized manner, considering the costs?
2. Send the instructions to your IP service provider promptly
The nationalization process of your PCT application is not always straightforward. It depends on many legal requirements (i.e., the nationality of your inventors, how the applicant acquired the right to the invention, etc.) and sometimes it can be very complicated. You would not want to be paying additional fees, so always keep in mind that it is better to send the instructions to your IP service provider early on, ideally two months before the first official deadline. Are you nationalizing many PCT applications and working with a large number of service providers (i.e., one for each jurisdiction)? Dennemeyer's PCT Nationalization service might be suitable for you in this case.
3. Keep an eye on the official fees
Official fees are always subject to changes, and, in many situations, they entail some increase in charges. For a better view of your costs, you should check the adjustment of official fees on a global scale. Another golden rule to keep in mind is that the official fees will match the volume of your patent application.
4. Double-check the translations
If your international application is in any other language than English, you will probably need an English translation. This can help you save money if you are interested in entering the national phases in various jurisdictions. The translation costs from English into a local language are usually cheaper than any other language combination. Also, take into account that even if the official language of the designated / elected jurisdictions is the same (i.e., Spanish), many dialects might be debated by national examiners. You would probably need an experienced patent attorney to check your translations before filing.
5. File amendments, if necessary
For some of the jurisdictions, filing amendments in the claims or description can be a good idea if you want to avoid unnecessary office actions during the prosecution of your applications. Moreover, in some cases, amendments are a must. For example, consider a PCT application that will enter the USA's national phase. We are pretty sure that you do not want to spend a lot of money on multiple dependent claims. Ideally, check the amendments with your patent attorney before filing or let us take care of this.
6. Execute the IP forms quickly
Directly linked to the second point, this is especially interesting if some of your inventors are no longer working for your company or if you need a power of attorney to be notarized and legalized by a consular officer. One effective way to avoid a conundrum is by sending your executed IP forms to the IP service provider in a timely manner. Otherwise, late service and official fees for filing will be applicable in your case.
7. Have all the changes done in front of the International Bureau (IB)
Many changes can happen during the patent's life cycle, from the address of correspondence to finding a new applicant for your international application. It is better to have everything recorded in front of the IB, mainly for the following reasons: the changes will be completed at no costs, WIPO will issue the PCT/IB/306, and the national patent offices will also consider your changes. Do not forget that you also have a time limit for this procedure.
8. Work with experts in the technical field
Having a skilled patent attorney in a specific field of technology is one of the most valuable assets. Our patent attorneys have years of experience in various technical fields and are always up-to-date with the latest technology development. Choose your experts carefully!
9. Do not forget about annuities!
You already have a lot on your mind - do not let your patents laps by mistake. Always ask your IP service provider to monitor your annuities. This way, you will receive reminders every time the due date for annuity payment is approaching. And this is something that DIAMS iQ can definitely help with!
10. Always be mindful about extensions
Have you already filed your application in one jurisdiction or are already in possession of a granted patent? Maybe you want to consider extending your rights to another territory based on the rights derived from your parent patent application. If we managed to make you consider nationalizing your PCT applications, reach out to us and request a quotation.
The opening of the Unified Patent Court (UPC) on June 1, 2023, raises questions about potential changes to existing licensing regimes.