What is the deadline to submit a PCT application to the national phase?

The deadline to submit a PCT application to the national phase is an important milestone to ensure patent applications are protected in each specific country. Complying on time helps the applicant maintain priority, avoid lapse of protection, and expand the scope of patent exclusivity. Preparing and filing applications properly not only helps protect patent rights but also creates a competitive advantage in the international market.

What is a PCT application? What is a PCT application to the national phase?

Pursuant to Article 3 of the Decree 65/2023/ND-CP, PCT application are specified as follows:

• “PCT application” means a patent application filed under the PCT Treaty.
• “PCT Application designating or selecting Vietnam” means a PCT application filed in any member of the PCT Treaty, including Vietnam, in which Vietnam is the designated or selected country.
• “PCT application to the national phase” is a PCT application that designates or selects Vietnam and is filed with the state management agency on industrial property rights.
• “PCT application with Vietnamese origin” means a PCT Application filed from Vietnam, which claims protection in any member of the PCT Treaty, including Vietnam.

“PCT Treaty” is the Patent Cooperation Treaty 1970, amended in 1984 and 2001. Accordingly, the Patent Cooperation Treaty (PCT) is an international agreement that allows applicants to register patent protection in many countries with a single application. PCT helps simplify and prolong the time for applicants to decide which country they want to protect, saving costs compared to filing applications for each country separately.

Existing PCT Treaty 157 countries members, including major markets such as the US, EU, China, Japan, Korea… Vietnam has also been a member of PCT since 1993.

Deadline to submit a PCT application to the national phase

According to the provisions of Clause 3, Article 19 of Decree 65/2023/ND-CP, for PCT applications that designate or select Vietnam, to enter the national phase, the applicant must submit to the state management agency on industrial property rights within 31 months from the priority date (if the application has a priority claim) or from the date of filing the international application the following documents:

• Patent registration declaration, follow Form No. 01 in Appendix I of Decree 65/2023/ND-CP;
• Copy of international application (in case the applicant requests to enter the national phase before the international publication date);
• Vietnamese translation of the description and summary in the international application (publication or original submitted if the application has not been published and amendments and explanation of amendments, if the international application has amendments under Article 19 and/or Article 34.2(b) of the PCT Treaty);
• Copy of fee and charge payment voucher (in case of payment of fees and charges via postal service or direct payment to the account of the state management agency on industrial property rights);
• Authorization document (in case the request is submitted through a representative).

Processing of PCT application to the national phase

The processing of PCT application to the national phase is clearly specified in Article 21 of Decree 65/2023/ND-CP. Accordingly, PCT applications to the national phase are processed as follows:

1. Claims for priority in PCT applications to the national phase are processed in accordance with the PCT Treaty and the Regulations implementing the PCT Treaty. To receive priority, the applicant must:

• Reaffirm the claim for priority rights in the declaration;
• Pay the appraisal fee to request priority rights;
• Submit Vietnamese translations of documents submitted to the International Bureau at the request of the state management agency on industrial property rights and necessary documents according to Rule 17.1(a) of the Regulations implementing the PCT Treaty.

2. The applicant can amend and supplement documents in the application. Amendments and supplements to documents in the application must comply with the following regulations:

• Articles 28 and 41 of the PCT Treaty, Rules 52.1(b) and 78.1(b) of the Regulations on Implementation of the PCT Treaty and provisions of Article 115 of the Law on Intellectual Property;
• Authorization documents and documents transferring the right to file an application during the international phase (if any) must be filed within 34 months from the priority date (if the application has a claim for priority rights) or from the international filing date;
• Amended and supplemented documents submitted by the applicant to the state management agency on industrial property rights must be made in Vietnamese.

3. The time to start processing a PCT application to the national phase is the first day of the thirty-second month from the priority date (if the application has a priority claim) or from the international filing date. If the applicant makes a written request for early processing of the PCT application to the national phase, the PCT application will be processed before the deadline specified in this Clause in accordance with the provisions of Article 23.2 of the PCT Treaty.
4. The PCT application to the national phase is examined for form and content according to the procedures prescribed for invention registration applications submitted according to the national format and is published within 02 months from the date of acceptance of the valid application.

In-depth consultation on PCT applications and application processing at Long Phan Consulting Company

Long Phan Consulting Company provides comprehensive PCT consulting and processing services, helping individuals and businesses register for international patent protection under the PCT Treaty effectively. Service scope includes:

• Consulting on patent protection strategies according to PCT: Determine the scope of protection, evaluate novelty, and ability to grant licenses in target countries.
• Draft and submit PCT application: Support in preparing documents, writing international standard invention descriptions and filing applications at the National Office of Intellectual Property or WIPO.
• Look up and analyze the possibility of granting a degree: Evaluate the creativity and application of the invention based on international search results.
• Processing requests for international preliminary appraisal (IPEA): Supports appraisal requirements to increase the chances of being granted a degree in each country.
• Track PCT application progress: Monitor and process feedback from international patent offices, ensuring applications are not rejected or delayed.
• Consulting and support at the national stage: Prepare documents, carry out application procedures in each country on time (30 or 31 months).
• Negotiation and transfer of patent rights: Support businesses to commercialize inventions, negotiate licensing or franchising in international markets.

With a team of experienced experts, Long Phan Consulting Company is committed to providing professional services, optimizing costs, and helping customers effectively protect international inventions.

Frequently asked questions

Here are some frequently asked questions about the deadline to submit a PCT application to the national phase:

A PCT application allows the applicant to apply for patent protection in how many countries?

The PCT application allows the applicant to apply for patent protection in the 157 member countries of the treaty.

How is the priority date in a PCT application determined?

The priority date is the date the first patent application is filed in a country that is a member of the Paris Convention.

What documents need to be submitted when entering the national phase for a PCT application in Vietnam?

It is necessary to submit the invention registration declaration, a copy of the international application, a translation of the invention description and other documents as prescribed.

What is the fee for examining a request for priority rights in a PCT application?

This is the fee that must be paid to the state management agency on industrial property rights to conduct the procedures for evaluating that request.

How is the start time for processing PCT applications in the national phase calculated?

The start of processing is the first day of the thirty-second month from the priority date or international filing date.

What are the benefits of filing a PCT application?

The benefits are to simplify procedures, prolong the time to decide which country wants protection and save costs.

Is it possible to amend the documents of a PCT application during the national phase?

The applicant may amend and supplement documents in the application, in accordance with the provisions of the PCT Treaty and Vietnamese law.

What is a PCT application originating from Vietnam?

A PCT application originating in Vietnam is an application filed from Vietnam, requesting protection in any member of the PCT Treaty.

Which agency in Vietnam has the authority to process PCT application to the national phase?

The state management agency on industrial property rights, specifically the National Office of Intellectual Property, has the authority to process PCT application to the national phase.

How long does it take for an authorization document for a representative to file a PCT application?

The authorization document must be submitted within 34 months from the priority date or from the date of filing of the international application.

Conclude

The deadline for filing a PCT application to the national phase is an important factor in ensuring patent protection in the desired countries. Complying on time helps maintain application validity, avoid loss of priority and optimize the international protection strategy. Long Phan Consulting Company supports businesses in tracking and processing documents according to the correct process, ensuring successful registration. Contact the hotline 0906735386 for detailed advice.