PCT National Phase Filing: States, Considerations and Guidance

Welcome to the world of PCT national phase filing. The prospect of filing in some (or all) of the contracting states is very exciting. Sometimes, though, the whole process can just feel overwhelming for an applicant: What factors should I be considering? What questions should I be asking? It’s okay to be overwhelmed. This blog post will answer those questions and provide some guidance to help you navigate the process.

If we imagine each contracting state as a tree it doesn’t take long to see we’ve assembled quite the forest (of 152 trees/countries). We may ask ourselves, “If we’re filing in State A why not, also, file in State B? After all, they are right next to each another.” It’s obvious that we’ve become unable to see the forest for the trees.

One factor an applicant should consider when deciding which contracting states to enter is Direct competition. Important questions to ask include: Where is the competition (or, how porous are the borders)? What is the total available market? If necessary, how much investment would be required to increase your share of the market to achieve profitability?
A second factor an applicant should consider when deciding which contracting states to enter is whether it will run into any Regulations. It would be wise to research the rules governing the business entities located within each state under consideration.

Are these rules complementary to or incompatible with existing or anticipated business practices?

A third factor an applicant should consider when deciding which contracting states to enter is the Expense of filing in the contracting states of interest−both individually and cumulatively. Researching the filing requirements and practices of each state under consideration is essential. The goal of this research is to get an idea regarding the likelihood and difficulty of the state granting a patent on your terms. A patent practitioner can advise you as to which states have historically required applicants to compromise the scope of their claims to achieve acceptance, which states adhere to very restrictive rules concerning claim amendments, which states require translations to be filed along with a request for nationalization, what idiosyncratic formal requirements you may run into and a whole host of other state specific inquiries.

A fourth factor an applicant should consider when deciding which contracting states to enter is the existence of Administrative or judicial means through which one could enforce the patent, if necessary. Not every state has a framework in place that allows for effective patent policing in the event of infringement. State A may provide an adequate means of redress in the event of infringement while State B does not. That knowledge alone may tip the scale against filing in State B.

Finally, when deciding which contracting states to enter an applicant should consider the Market. At this stage, it is prudent to ask questions like: In what state(s) will assembly take place? In what state(s) do we wish to enter the stream of commerce? Once these questions have been answered, perhaps, take the analysis a step further and research growth potential within the prospective jurisdictions.

There you have it. I hope this blog post has helped turn what may have been the nightmare of PCT national phase filing into a D R E A M.