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International patent applications filed using the Patent Cooperation Treaty (‘PCT’) framework allow applicants to select the contracting states of interest for national and/or regional phase applications. The deadline to file an application in any specific country or region is usually 30 or 31 months from the application’s priority date. The deadline for specific countries and regions may be found here.
The official fees and formal requirements associated with filing in each country or region can vary significantly. For example, some countries require the provision of a Power of Attorney while others may require evidence of the applicant’s right to the invention or other official documentation in cases where the applicant is a company or organisation. The costs associated with filing in any specific country or region is typically in the region of £1,000 to £3,000 and these costs can grow rapidly when an applicant wishes to seek protection in multiple territories.
Many, if not all, countries and regional organisations impose limitations upon the language in which applications may be filed. In cases where the language of an application does not match an allowed filing language then a translation will need to be prepared before a national or regional phase application will be accepted. These translations are often due at the time at which the application is filed or shortly thereafter.
Translation of an application usually involves the services of a language expert with sufficient technical experience to understand an application and translate the precise technical meaning of the words into the necessary language. The use of a translator with technical experience is recommended as a mistranslation may greatly alter the meaning of the text, which can lead to uncertainty when the translated application, or patent, is read in the translated language.
The costs associated with translations can vary depending on the number of words to be translated and the specific languages involved. Languages that have fewer native speakers or which are more complex may incur additional costs due to a limited number of professional translators or the complexity associated with a particular language. For applicants that wish to limit their costs, there are a number of options available when considering national and regional phase applications.
The length of a specification should be reviewed at the time of drafting to ensure that extraneous or excessive text is removed. Specifications of reduced length will require less translation. Shorter specifications may also reduce costs by reducing any page fees associated with specifications of a certain length in some countries.
Where an applicant is interested in filing in multiple countries, a single translation may be used in countries that share a common filing language. For example, countries that require an application to be filed in Arabic may each use the same Arabic translation as a means of spreading the cost of the translation between these countries. English, French, Spanish, and Arabic are some of the most common languages shared by multiple countries.
Regional country groupings provide another route through which an applicant interested in protection in multiple countries may save or defer costs. Regional applications, such as an application with the European Patent Office or the Eurasian Patent Organisation, allow an applicant to seek protection in a group of countries by means of a single initial application. Regional groups generally require a single initial application, which encompasses countries that may have different national filing language requirements. For example, the European Patent Office requires that most applications be filed in English, French, or German despite providing a route for protection in countries that would not accept these languages, which were a national phase application to be filed directly. The need to prepare a single translation when filing a regional application may, therefore, reduce translation costs or defer further translation costs until the regional application achieves grant.
More information on the filing languages for the national and regional phases of international applications is provided in the table below. Information was compiled from the national chapter of the PCT applicant’s guide published by the World Intellectual Property Organisation (WIPO) as of 19 May 2023.
National and Regional Phase filing languages - pdf
If you have any queries regarding this topic, or would like assistance creating or implementing an IP strategy, please contact Dr Marianne Privett of our team.
Category: Latest Insights | Author: Marianne Privett | Published: | Read more
