The National Phase of a PCT

For patent attorney members of the group, one suggested route to exchanging work occurs on entry into the national phase of a PCT application. For most clients this is an activity of high administrative effort and significant financial input and there is little opportunity to demonstrate any expertise.

At the EPO, they would like us to conform applications with European practice by amending the claims to refer to the closest prior art in the extended international search report, introducing reference numerals and addressing the objections. I do that for my direct clients and find that it has singularly little effect on the term for a response from the EPO. I noted recently that I had some cases where I had entered the European phase 2 years ago on this basis and still I had had no feedback. Now delay in incurring substantial expense is usually something welcome to an entrepreneur, especially if he has a granted UK patent already, so filing clients are not particularly unhappy about this situation. Of course, those asking for freedom to operate opinions are less calm about it. As a result, therefore, no overseas client ever instructs any professional work at this stage of proceedings.

The rise in EPO fees on 1 April 2008 makes me consider the best way of dealing with this business and I was intrigued to see the initiative made by KeyIP to take the professional element out of nationalisation and treat it as a purely administrative exercise.

This seems like a pretty good idea especially when I see that my profile of bad debts is almost exclusively attributable to this type of work. I am therefore not surprised to see that it is a central feature of their service that payment is required in advance.