As noted in Emily Weal’s earlier post on the subject (see here) patent applicants will still have the option of opting out of the unitary patent package if desired and applying for direct national patents.

A note of caution was sounded in the earlier post highlighting that not all of the 25 European countries that are part of the unitary patent package permit national phase entry from a PCT application.

In this post we take a closer look at which countries you need to keep an eye on.

As many readers will know, the PCT system provides a mechanism for filing a single patent application (usually at the end of the convention year, i.e. 12 months from the priority date [the date of filing of the first patent application for the invention]) that essentially reserves the applicant’s right eventually to pursue individual patent applications in over 140 countries. In essence, rather than filing multiple patent applications in various foreign territories at the end of the convention year, an applicant can defer the decision about where to pursue patent protection until 30/31 months from the priority date by filing a PCT application.

However, applicants wishing to “opt out” of the unitary patent package and file national patent applications at the 30/31 month point should bear in mind that a number of the 25 countries that are part of the unitary patent package do not allow an applicant to file a direct national patent application from a PCT application and protection in these countries is only available via a regional European patent application (and, by extension, via a unitary patent).

The 25 countries that are part of the unitary patent package proposal are:

Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Sweden, United Kingdom

However, the following 9 countries do not allow a national patent to be filed from a PCT application:

Belgium, Cyprus, France, Greece, Ireland, Latvia, Malta, the Netherlands, Slovenia

Therefore if protection, via a national patent, is desired in these territories then it will be necessary to consider filing a direct patent application much earlier in the patent life-cycle, namely 12 months from the priority date.

The following countries do currently allow a national patent to be filed from a PCT application:

Austria, Bulgaria, Czech Republic, Denmark, Estonia, Finland, Germany, Hungary, Lithuania, Luxembourg, Poland, Portugal, Romania, Slovakia, Sweden, United Kingdom

Most of these countries will allow an applicant to defer the national filing decision until 30/31 months from the priority date. However, it should be noted that Luxembourg has a Chapter I deadline of 20 months from the priority date. National phase filings should therefore be made either on or before 20 months from the priority date for Luxembourg or alternatively a demand for international preliminary examination will be required to extend the national phase deadline for Luxembourg to 30 months from the priority date.

A quick word on Spain and Italy. As noted in the earlier post Spain and Italy are currently outside the unitary patent package proposals but could join in if they wanted to. If this event occurs then it is noted that Italy does not allow direct national phase filings to be made from a PCT application whereas Spain does.

If you would like to know more about any of the issues raised in this post then please contact your friendly neighbourhood patent attorney.

WIPO’s page on PCT Contracting States for which a regional patent can be obtained via the PCT can be found here.

Mark Richardson    3 January 2012