Entry into the National Phase of a PCT International Application – Filing a Patent Application for an Invention or Utility Model with a National/Regional Patent Office

 

An international application filed under the PCT system may enter the national phase in a selected country (e.g., the United States, China, India, Chile, and others) or be submitted to a regional patent office (such as the European or Eurasian Patent Office) within 30 months—and in some countries, 31 months—from the priority date of the original Russian application.

A PCT application for an invention or utility model (based on the Russian national application) is submitted to the national or regional patent office of the selected jurisdiction through a local or regional patent attorney, in accordance with the national or regional laws governing the formal requirements for patent applications.

If necessary, the application may be revised or supplemented to comply with national or regional requirements, provided that the amendments do not exceed the scope of the original disclosure.

 

The PCT application is then translated into the national language, and national/regional fees are paid, along with the fees of the national/regional patent attorney, other required official payments, and the cost of our services for filing the national/regional application.

Typically, prosecution of the national/regional application is billed separately and depends on: the quality of the original application, its complexity, volume, number of independent claims, international search results, and other factors.

During prosecution, additional costs should be anticipated for processing office actions, translating them from a foreign language, preparing responses and translating them into the official language, paying fees for extensions of deadlines, amending the application materials, and other actions. In some countries (such as Canada, UAE, and Peru), as well as at the European Patent Office, annual fees are due during examination to maintain the application.

In practice, the cost of prosecuting a national/regional application may represent a substantial portion (30 to 60 percent) of the total cost of international patenting.

Upon issuance of a decision to grant a national/regional patent, issuance fees are paid (sometimes along with the fee for the first year of validity), the fee of the local patent attorney, the cost of our services for obtaining and delivering the certificate, and postal expenses.

 

The exact cost of national/regional patenting is calculated individually upon your request.

 

Note that utility model protection is not available in all countries.

 

Below is a list of countries where utility model protection is available:

Australia, Argentina, Armenia, Austria, Belarus, Belgium, Brazil, Bulgaria, China, Colombia, Costa Rica, Czech Republic, Denmark, Estonia, Ethiopia, Finland, France, Georgia, Germany, Greece, Guatemala, Hungary, Ireland, Italy, Japan, Kazakhstan, Kenya, Kyrgyzstan, Malaysia, Mexico, Netherlands, OAPI, Peru, Philippines, Poland, Portugal, Republic of Korea, Republic of Moldova, Russian Federation, Slovakia, Spain, Tajikistan, Trinidad and Tobago, Turkey, Ukraine, Uruguay, and Uzbekistan.

 

In practice, in some countries where utility models are not available, it is still possible to obtain a patent for an invention based on a Russian utility model application. However, the possibility of such conversion is evaluated on a case-by-case basis.

 

To enter the national phase of a PCT application, the applicant must provide:

1. PCT application number.
2. The complete set of documents for the PCT application for an invention or utility model. Materials from the original (priority) Russian application. If there were multiple priority applications, materials for all of them.
3. If any amendments were made to the original application materials, full information on those amendments and the updated documents.
4. All office actions issued by the Russian national patent office and the applicant’s responses.
5. The results of the international search and international preliminary examination, as well as any other available patent search results related to the application.
6. The full and exact name of the applicant (individual).
7. The applicant’s address and mailing address for correspondence.
8. Full names and residential addresses of the inventors of the invention or utility model.
9. A power of attorney in the name of the national/regional patent attorney, signed by the applicant (form provided).