At the end of the PCT process, decisions need to be made on which countries to pursue patent protection by entering a patent application in the national phase for substantial examination and parallel prosecution in each jurisdiction to obtain patents in the US, UK, China, or a patent in Israel. This can be a stressful period due to the significant patent-office fees that are due basically at the time (30-31 months after the earliest priority filing date in most jurisdictions, and longer in certain countries). Intellectual property firms can provide valuable information and guidance in making such decisions.
Many strategic issues come into play as part of the filing strategy when making such decisions in the context of an overall IP strategy and patent portfolio including legal, technical, economic, and market factors. Such issues are highly individualized, and can only be assessed on a case-by-case basis. When the EPO is selected, the patent-entry procedure is referred to as regional phase as it includes options for numerous EU countries and extension states.
Upon entering national and regional phase, the applicant is required to submit the patent application specification and claims with the application request. A critical aspect of the IP strategy to consider is whether the claims need to be amended specifically for different jurisdictions. In most instances, the answer is yes.
For example, national patent offices have different limits on the number of claims which can be submitted without additional fees. In some cases, the number of originally-filed claims may exceed such limits. Applicants can reduce the number of claims to decrease the filing costs.
Furthermore, differences regarding patentable subject matter may make some of the originally-filed claims unpatentable in some jurisdictions, such as with methods of medical treatment and diagnostics. Removing such claims reduces filing fees, and expedites prosecution by eliminating unnecessary procedural steps.
In addition, in situations in which the applicant was not able to timely file amendments under Article 19 of the PCT Rules, such amendments can be entered during national-phase entry. Moreover, existing claims can be modified and/or corrected to adapt claim style to the locale, or to improve claim language. In some jurisdictions, new claims can be added as well, as long as the claims are within the scope of the original disclosure.
FlashPoint IP, a leader among intellectual property firms, factors these wide-ranging aspects into the process of securing patent protection, whether in performing a patent search and patent analysis of the prior art, engaging in patent drafting of applications, selecting how and where to file a patent application, or prosecuting your claims to an invention to help you maximize value in an extensive array of practice areas. Our patent attorneys are adept at synthesizing the many facets needed to create a winning formula for your IP.
FPIP specializes in obtaining a patent in Israel, US, and EU jurisdictions – filing patent applications on behalf of its clients directly before the USPTO, EPO, WIPO, and ILPO, and worldwide via our network of professional associates. Contact us to discuss your options regarding IP strategy and positioning, and how best to secure your rights.