Thank you for replying Aleš! I agree, in particular, that such a strategy should in any case be consulted with the patent attorney.

In your answer, you mentioned the preliminary examination. What do you think about where it is easier to get a positive preliminary exam and possibly the same "A" in a search report, with a national authority or a regional one?

It is patent practice and, in most cases, if you receive a positive preliminary exam and a search report in regional patent proceedings, it is easier to enter the national phases. And how is it vice versa?

Do you have the experience with overcoming WIPO or EPO's objections, then getting a granted patent or a intention to grant (only EP of course), and then, when entering the national phase, did the national authority raise completely different defects that were in collision with an inventive step or novelty?

Of course this depends on the national stages in which you enter. This should not happen if you enter the PCT or EPC member countries, but I would like to hear your experience.

I think the debate about whether the regional phase will make it easier or more complicated for the life of the patents and the inventors can be quite interesting and I wonder if a negative opinion would be found.

Thank you for sharing your experience with the USPTO, EAPO, WIPO and EPO. I can only confirm this opinion based on my own experience.

However, I do not think my previous approach was non-business. On the contrary, if I have a great invention and I need strong protection in many countries, I have a lot of possibilities to achieve it. The timing of entry into the national and / or regional phases is quite important and should be in line with the business affiliation to which the application relates.

One option is to submit a national priority application and then you have 12 months to decide where to go. If you need more time for decision-making, you can use the PCT filing application where you can extend this time to enter the national phases for 30 months from the priority date. Another option is to enter directly into the national phases where I am applying for protection during the twelve months. Alternatively, enter the EPO, successfully terminate the procedure and then only validate in the EPC member countries.

The cost of such a patent procedure is difficult to predict and varies according to the number of countries in which protection is sought, and also by authorities you are trying to achieve it.

In this case, I think that, in order to save money during patent proceedings with national and regional authorities, it is advisable to think about where I can get a positive and quality preliminary examination. As a result, it can simplify further patent proceedings and thus reduce the costs of both the patent attorney and the utility fees.

In this way, patent agents should provide their services.

Hello,

regarding the opinion in the different offices, notice that some of them are just identical....

As a citizen of a member state of the EPO, usually when you file at WIPO, the receiving office and the designated search authorities are compulsorily the EPO, so, if you file a first application at the EPO and then file a PCT, you will have the same examiner.... Notice also that examiners are usually looking at the files of the other countries in the same familly as soon as they become publicly available and raise almost simultaneously same objection in different countries (except USPTO, as their patent law is too different, see famillies on european patent register, you would have access to automatic translation of the prosecution file in Japan, China, Korea, US,...)

And usually, upon extension, you will get the same search report, even if you did some amendments to be at least new in view of the identified prior art.

If they see that you have amended (in many cases they don't), they use to raise a clarity issue or something formal to avoid loosing time on your file (they have productivity goals...)

Notice that many European countries subcontract their search to the EPO, so that filing for example in Belgium would give the same search results (but you would have to file it in one of the national languages: French, Dutch or German, no English)

Anyway, our "standard" strategy is to file a first national (cheaper in BE) or EPO (if text in English) application then a PCT after 12 months. We use to abandon the first application before publication to delay maintenance fees and to avoid any interference with the new PCT file in case of lost priority.

The advantages are: you may make amendments to react to the search report (within the limit of maintaining priority if needed) and all the charges are delayed by one year (mainly maintenance fees to be paid during the 20 years of maintenance). Only national phases are not delayed by this strategy.

This lets to the applicant 30 months before the high costs of parallel prosecution in several countries occurs. This lets time for example to universities to find interested third parties for licensing, and decide whether they keep on track or abandon before national phases.

Regarding prosecution, as novelty is quite black and white and reviewed almost identically in all countries, we use to amend the claims to be new on the extension filing, and eventually further amend at international level or upon entry into national phase.

As obviousness at USPTO is seen completely differently from the inventive step in Europe, we use not discuss this before national phases.

This is the standard way we proceed, but we frequently adapt on a case to case basis.

For example, in the case of an industrial who wants to full launch a new product within 1 month, I would have a completely different standpoint.... Would also be different if the market launch is next year.

I appreciate all the answers herein but why everyone is silent on the in-house patent-ability search which gives you confidence too on the novelty and inventive step. Further if found to be qualified can have a discussion with the in-house strategy team as well as business development guys to finalize the list of countries.

The variances in PCT, PCT regional, PPH, Accelerated Programs on an international filing are significant considerations going beyond the ISA process.

Broad based experience in the national and international accelerated filing procedures in both PCT and direct application filings

Your patent strategy is dependent on your target market and intended use of your technology (licensing, sale and or corporated utilization). Your filing options are PCT, regional, direct national filings or a combination with each option having benefits and drawbacks depending on your ultimate strategy. Another consideration is utilizing the accelerated filing programs such as PPH, PACE, Green Technology accelerated filing programs, and various programs at the USPTO.