Least popular patenting strategy – The patent will cover just one or two countries.
In this case, no regional or PCT patent applications will be required. The timeline will consist only of the national patent procedures in selected countries, whereas only one date is critical – submission of a national application in the second country should be made within 12 months from the earliest priority date (except for provisional applications);
Some parties adopt the strategy of covering multiple counties, but not more than 2-3 within different regions.
In this case, no regional patent applications will be needed, but PCT application filing will be indispensable in order to save cost on examination and search. Tracking based on two schedules will be performed. If the priority application is filed as a national application, then tracking starts with national application timeline, wherein the most critical date is the end of 12th month from the priority filing date.
In case the priority is filed as PCT application at once, the most important timeline to follow is the PCT application timeline, provided in the picture below. During the validation phase (national phase of PCT), regular timelines apply as for all national patent applications.
Most popular patent filing strategy will cover tens of countries worldwide.
i) National (priority/provisional) application (e.g. P1) = time 0 (zero)
ii) PCT application (convention application) = 12 months from 0
iii) Regional Applications (e.g. EPO)/national phase entry = 30/31 months from 0
iv) National validation after grant = could be years
The tracking begins with the deadline of 12 months after the priority date, then PCT timeline, followed by regional applications deadlines. Finally – the national phase, during which the actual patents are issued after a process of substantive examination by the patent examiner of the patentability of the claimed invention (the process is called prosecution which generally encompasses a dialogue between the Examiner and the representative of the applicant).
There may be variations of the sequence provided above, such as avoiding the national priority application and filing PCT directly at the very beginning; or, for some countries, validation follows immediately after PCT phase, because there might be no regional application for selected countries, etc.
Figure 1. PCT timeline
Provided above is the PCT timeline. PCT is the most complex type of patent application – it has 7 deadlines and multiple of options for almost each milestone. Everything begins with the priority application date. The priority application might be national, regional or PCT itself. In case it is not a PCT application, then it has to be filed within 12 months from the priority date.
When filing a PCT application, an international search authority has to be indicated. For UK applicants, only the European Patent Office can be indicated as the International Search Authority. Some other countries can choose between two or more search authorities. Selection of an ISA is important for the validation phase (the search performed in some authorities might be not recognized by some national patent offices) as well as the search fees are different.