Although the patent disclosures and filing formalities of the IP5 countries share some common features, there are slight differences between them, which should be kept in mind when preparing an international patent application that would likely be entered into national stage in multiple IP5 countries.  The focus of this article is to highlight the differences in national stage entry requirements in the IP5 countries.  The next IP5 article will cover the differences in the application parts and the ordering of the application in the IP5 countries.

China

A Chinese national stage application has to be filed within thirty months from the earliest priority date, or the filing date of the PCT application if no priority is claimed.  If an application fails to enter the Chinese national stage within the thirty-month window, the filing can be extended up to two months from the thirty-month date with an additional restoration fee.

A Chinese translation of the corresponding PCT international publication must be submitted with the PCT application when entering the Chinese national phase.  The translation must include the description, the claims (original as well as any amendments), the drawings (limited to any text matter of the drawings), and the abstract.  The name and address of the inventor, as well as the name, address, and nationality of the applicant, are required.

A Power of Attorney must be submitted for each application.  A General Power of Attorney may be submitted for all future applications.  The date of execution of the Power of Attorney has to be earlier than the Chinese filing date.  If the applicant for the Chinese application is not the same as that of the international application or that of the priority document, an assignment duly executed by the original applicant is required when entering the Chinese national phase.

United States

The deadline for filing a national stage application in the United States is thirty months from the earliest priority date, or the filing date of the PCT application if no priority is claimed.  No grace period or extension of time is available; however, an applicant may file a petition to revive an abandoned PCT application in accordance with the provisions of 37 C.F.R. § 1.137.  To complete the national stage filing requirement, all that is generally required is an English translation of the PCT application, including the specification, drawings, and at least one claim, and any amendments to the claims of the international application (including an English translation of the claims).  As with any conventional U.S. nonprovisional filing under 37 C.F.R. § 1.53(b), the filing fee and oath or declaration of the inventors are not essential to obtaining a filing date, since such items could be supplied later in response to a Notice to File Missing Parts. However, for applications with an international filing date on or after September 16, 2012, an application data sheet is required to postpone submission of the required oath or declaration of the inventors.  The "filing date" (371(c) date) printed on all U.S. Patent and Trademark Office application correspondence is the date on which the minimum requirements under 35 U.S.C. § 371 are completed to commence examination of a U.S. national stage application.

Japan

The deadline for filing a national stage application in Japan is thirty months from the earliest priority date, or the filing date of the PCT application if no priority is claimed.  No grace period exists in Japan, but the Japan Patent Office allows an additional two months from the filing of the national stage application in which to supply the necessary Japanese translation of the PCT application.  For entering a PCT application into the Japanese national phase, the following documents/information are required: (1) the full name, address, and nationality of the applicant(s); (2) the full name and address of the inventor(s); and (3) Japanese translations of the description, the claims (original as well as any amendments), the drawings (limited to any text matter of the drawings), and the abstract.  For nonresident applicants, designation of an agent is also required.

Korea

The time limit applicable for entry into Korean national phase is thirty-one months from the earliest priority date, or the filing date of the PCT application if no priority is claimed.  Pursuant to the revisions to the Korean Patents Act, which came into effect on January 1, 2015, extension of time of one month is available upon request for filing of the Korean translation of the PCT application.  Accordingly, the Korean translation can be filed within thirty-two months from the earliest priority date, with payment of the one month extension fee.  The required contents of the PCT translation for entry into the national phase are the description, the claims (if amended, both as originally filed and as amended), any text matter of drawings, and the abstract.  For nonresident applicants, appointment of an agent is also required.  Additionally, the name and address of the inventor, as well as the name, address, and nationality of the applicant, are required.

EPO

The deadline for filing a national stage application in the European Patent Office (EPO) is thirty-one months from the earliest claimed priority date of the PCT application, or the filing date of the PCT application if no priority is claimed.  However, if the PCT application designated the EPO, then it may be possible to enter the European phase within a two-month time limit set by the EPO shortly after the thirty-one-month date has passed.  Late entry into the European phase involves additional procedural steps and payment of significant surcharge fees.

If the PCT application was not published in an official language of the EPO (English, French, or German), then a translation into an official EPO language is required for entry into the EPO.  To enter the national phase in Europe, translation must include the description, the claims (if amended, both as originally filed and as amended), any text matter of the drawings, and the abstract.  Additionally, the name and address of the inventor, as well as the name, address, and nationality of the applicant, is required.  Appointment of an agent is also required if the applicant has neither a residence nor has a principal place of business within the territory of one of the Contracting States of the European Patent Convention.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.