At the end of the “international phase” of the PCT procedure, it is necessary to convert the PCT application into a bundle of national and/or regional applications if patent rights in the invention are not to be lost. The deadline for doing this varies from country to country, and the choice of countries/regions, from the list of possible countries is up to the applicant.
Generally speaking, there are two lists: those where national phase entry has to be completed within 30-months of the PCT application’s filing or priority date, or those where national phase entry has to be completed within 31-months of the PCT application’s filing or priority date.
|30-month countries/regions||31-month countries/regions|
TZ United Republic of Tanzania
AE United Arab Emirates
AG Antigua and Barbuda
BN Brunei Darussalam
DO Dominican Republic
IR Iran (Islamic Republic of)
KN Saint Kitts and Nevis
KP Democratic People’s Republic of Korea
LA Lao People’s Democratic Republic
LC Saint Lucia
LK Sri Lanka
OA African Intellectual Property Organization (Benin, Burkina Faso, Cameroon, the Central African Republic, Chad, Comoro Islands, Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal & Togo)
SA Saudi Arabia
ST Sao Tome and Principe
SV El Salvador
TT Trinidad and Tobago
US United States of America
VC Saint Vincent and the Grenadines
AP African Regional Intellectual Property Organization (Botswana, Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, São Tomé and Príncipe, Sierra Leone, Somalia, Sudan, Swaziland, Tanzania, Uganda, Zambia, Zimbabwe)
CR Costa Rica
CZ Czech Republic
EA Eurasian Patent Organisation (Turkmenistan, Republic of Belarus, Republic of Tajikistan, Russian Federation, Republic of Kazakhstan, Azerbaijan Republic, Kyrgyz Republic, Republic of Armenia & Republic of Moldova)
EP European Patent Organisation (Albania, Austria, Belgium, Bulgaria, Switzerland, Cyprus, Czech Republic, Germany, Denmark, Estonia, Spain, Finland, France, United Kingdom, Greece, Croatia, Hungary, Ireland, Iceland, Italy, Liechtenstein, Lithuania, Luxembourg, Latvia, Monaco, Former Yugoslav Republic of Macedonia, Malta, Netherlands, Norway, Poland, Portugal, Romania, Serbia, Sweden, Slovenia, Slovakia, San Marino & Turkey)
KR Republic of Korea
MD Republic of Moldova
MK The former Yugoslav Republic of Macedonia
NZ New Zealand
PG Papua New Guinea
RU Russian Federation
SL Sierra Leone
SM San Marino
SY Syrian Arab Republic
VN Viet Nam
ZA South Africa
BA Bosnia and Herzegovina
Please note: the deadlines are fixed, and that there is little leeway for extensions of time. Notably, Japan (JP) and certain other countries have no provision for late entry into the national phase. Further, you need to take into account time zone differences because countries like Japan and China are effectively one day ahead of us here in the UK. This is a critical consideration when providing instructions because missing the deadline due to time zone differences is not an acceptable reason for restoration.
You may note that certain key countries, such as France and Italy, do not appear on the main list of PCT contacting states. However, these countries are members of the European Patent Organisation, so patents can be obtained in those countries nevertheless, by entering the European regional phase of the PCT at the 31-month stage. Also, certain countries above, such as Germany and Spain require direct entry into the national phase at 30-months, but these countries are also EPC contracting states so it is still possible to defer by a month by applying for a European patent at the 31-month stage instead.
Entering the national/regional phase is a costly and complicated process. We can handle the filing of UK national phase applications as well as EPO regional phase applications. For other countries/regions, we instruct overseas attorneys to handle this for you, with us as the “coordinator” to make sure that prosecution and amendments are consistent across the family of applications.
Please contact us if you would like to learn more, or provide instructions.