Entering the National Phase

• Author: Jay Erstling - Samson Helfgott - T. David Reed
• Pages: 133-148

133

CHAPTER 6

Entering the

National Phase

The national phase follows the international phase and consists mainly

of processing the PCT application in each national or regional pat-

ent office in which you have decided you want patent protection. The

selected patent offices are known either as “designated offices” (DOs)

or “elected offices” (EOs), while the nations or regions are appropriately

called either “designated states” or “elected states.” It should be noted

that the distinction between the labels is entirely artificial and confus-

ing. When, during the international phase, an applicant does not seek

international preliminary examination under Chapter II of the PCT,

and the applicant enters the national phase on the basis of an Interna-

tional Preliminary Report on Patentability I (IPRP I), patent offices are

referred to as designated offices and the countries as designated states.

Because the overwhelming percentage of applicants do not seek the

benefits of Chapter II, national phase offices and countries most fre-

quently bear the label “designated.” Not surprisingly, offices and coun-

tries are called “elected” when an applicant has sought international

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134 The Practitioner’s Guide to the PCT

preliminary examination and the applicant enters national phase on the

basis of an International Preliminary Report on Patentability II (IPRP

II). In either case, it is important to remember that the ultimate decision

to grant or deny a patent in any designated or elected office remains

solely within the jurisdiction of the designated or elected state.

If an Applicant Receives an: The Applicant Enters National Phase In:

IPRP I Designated Offices/Designated States

IPRP II Elected Offices/Elected States

For simplicity’s sake, we will refer to designated and elected offices as

“national offices.”

The process for entering the national phase is rather simple, but

it involves several important requirements. Generally, it entails filing

a form or an express request notifying the national or regional office

that you desire a patent in that particular country or region. The exact

process for making the request varies among countries, but universally,

it must be completed prior to termination of the international phase.

In addition, you must pay the required national or regional fee, which

also varies from country to country, and, if necessary, provide a trans-

lation of the PCT application into the national office’s official language.

Other possible national phase requirements include the appointment of

a local agent, the submission of powers of attorney, and the filing of per-

mitted declarations. National offices normally may not begin to process

or examine PCT applications prior to termination of the international

phase, unless you enter the national phase early.

It is important to keep in mind that, with the exception of enter-

ing the national phase in the United States, the process of entering the

national phase and prosecuting applications in PCT countries usually

requires foreign patent counsel. It is therefore important to establish

good working relations with reliable foreign patent counsel, because

the fate of national phase PCT applications rests largely in their hands.

It is also essential to remember that the burden of entering the national

phase rests solely on you. Neither WIPO nor the receiving office (RO)

nor the international searching authority (ISA) sends any notification

about national phase entry deadlines or requirements. You are respon-

sible for meeting the deadlines and requirements even if you have not

yet received the ISR and WO from the ISA or the IPRP (Chapter II)

from the international preliminary examining authority.

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