PCT Newsletter
September 2026 | No. 09/2026
SME Support Series
PCT SME Support Series (No. 4): How to decide where to protect your invention
Q: Our startup has filed a PCT application and identified eight possible markets, but our budget will cover entering the PCT national or regional phase in only three or four. How should we decide where to seek patents? What factors should we consider?
A: The PCT is an international patent filing system. Granting patents remains an exclusive decision for the relevant national Offices in the national phase. Where you ultimately obtain patent protection will depend on the specific national or regional territories you choose, and on whether the patent Office in each of those territories grants you a patent, based on its own patent law. Obtaining a patent can be a considerable investment – along with fees, you may need to pay for local legal advice/representation and possibly also translation. You also need to bear in mind the cost of maintaining the patent, including renewal fees and potential litigation costs. So where to seek protection, also known as “national phase entry”, is a critical decision for your business.
By filing an international application through the PCT, you have maximized your decision-making window, gaining time to research your options and hone your product and marketing plans. Below is an approach to decision-making to help ensure you make the most of all these advantages. It is based on a framework developed by Mr. David Reed, a corporate counsel, for a large company, and adapted to the resources and requirements of SMEs. The approach covers:
- what sort of factors you need to consider;
- who should be involved in the decision-making;
- when you should decide; and
- how you can weigh up all the options systematically.
What? Make sure you see the whole picture
You need to keep in mind strategic business issues. How valuable might each market be to you going forward? How vulnerable to competitors will you be if you don’t have a patent there?
You also need to assess the potential pros and cons of each national or regional patent system. For example, what sort of filing and maintenance costs would you incur? Would you need to translate documents? Might patentability of your subject matter be an issue?
Who? Bring the right people and evidence together
To ensure all these issues are considered, all relevant legal, technical, commercial and financial evidence should be in front of the decision-maker at the same time; the decision should not be guided by patent counsel alone. Depending on the size and structure of your business, this may engage multiple colleagues. Figure 1 and Table 1 set out the different perspectives needed.
Table 1: Information needed in deciding where to protect your invention
| Information to gather | Who can provide it? |
| Current application and PCT results | Patent adviser or IP coordinator: current claims, the International Search Report, written opinion, any amendments and Office-specific requirements. Ease of prosecution and legal enforcement in each territory. |
| Technical and competitive position | Inventor or technical lead: the product or process to be commercialized, alternative technologies, and how easily competitors could copy or design around it. |
| Commercial case | Product, marketing and sales leads: customers, market size and direction, launch plans, competitors, and how much of the total market each candidate represents. In addition, costs of protection for fees, translations and legal representation. Possibility of using Office worksharing to reduce costs, such as the Patent Prosecution Highway (PPH), regional agreements, validations, extensions, post-grant acceptance. |
| Licensing, manufacturing and partnerships | Relevant business leads: manufacturing and supply-chain locations, possible licensees, cross-licensing value, and any prospect of selling the patent right. |
| Budget and approval | Finance and the final decision-maker: available budget, other inventions competing for the same funds, expected value, and approval of the final shortlist. |
When? Start the review before the legal deadline and use PCT flexibility
With a PCT filing, the time limit for pursuing protection with national or regional Offices that you have designated in your application is usually 30 or 31 months from the priority date. However, exceptions exist, so confirm the current deadline and entry requirements for every Office you are considering (you can find these requirements in the PCT Applicant’s Guide). In scheduling your review process, allow adequate time to gather information and consult all relevant colleagues so you can provide instructions for counsel when requested before the legal deadline. For example, you could update the file around month 26 from the priority date, circulate the recommendation around month 28, and complete the necessary procedures before the applicable national-phase time limits. Figure 2 and Table 2 set out what is involved at each stage.
Entering the national phase in all your chosen markets need not happen on the same day. In addition to the different deadlines for entering the national phase, you may wish to consider early national-phase entry before the legal deadline in one or several countries or regions, for example to obtain early grant for marketing approval or to use further work-sharing and accelerated examination opportunities such as PCT-PPH. When you have entered the national phase, you may also consider any options available for accelerated processing at the relevant Office.
Table 2: Possible planning points and actions
| Planning point | Action |
| Around month 26 | Update the claims and file data. Gather the PCT results, product and market information, current cost estimates and Office requirements. |
| Around month 28 | Circulate a recommendation to the technical, commercial, licensing and finance decision-makers. Resolve gaps in the evidence and confirm the budget. |
| Before each applicable time limit | Approve and complete the selected entries. At the same time, review related applications already on file and identify any that no longer justify further spending. |
How to decide? Compare all your options methodically
To help ensure objective assessment of all your options, work through them methodically asking the same questions in each case: Table 3 suggests four major factors to consider. Mathematical scoring can also facilitate comparisons:
A weighted comparison will not make the decision for you, but it forces your team to state what matters and apply the same test to every option. In that vein, it will be for you and your team to decide the exact criteria and weighting that you apply. However, it may make sense to treat the first factor in Table 3 – whether or not there is a business need for exclusive legal rights over the invention – as a separate first question in your analysis, since if you decide you don’t need exclusivity in a particular territory, there is no need to weigh up other possible issues.
Selected WIPO resources
The webpage “Enter the National Phase” brings together many free-to-use resources on
this topic, and you can also check the online table “Time Limits for Entering National/Regional Phase under PCT Chapters I and II”. For detailed information, consult the National Phase section of the PCT Applicant’s Guide.
Key takeaway
Rather than beginning with “how many countries can we afford?”, ask “where is exclusivity commercially necessary?” Test each option against its full-life cost, the likely usefulness of the right, and the expected return. Consider all relevant perspectives and evidence in that decision-making process, record the assumptions underlying your decision, and revisit the decision as your business evolves.
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