Direct National Filing

Direct national filing is the method of securing intellectual property protection directly in individual target countries, allowing the owner full control over the process—from application preparation and submission to monitoring and receiving examination results. This approach is particularly suitable for applicants focusing on one or a few specific markets, requiring rapid protection while fully complying with local laws and regulations.

 

What is Direct National Filing?

Direct national filing is the process of registering intellectual property rights (patents, trademarks, or industrial designs) directly in the target country, without using international systems such as PCT, Madrid, or Hague. The owner retains full control over the entire process, including application preparation, submission, examination tracking, and issuance of the grant or protection.

This approach is especially suitable when:

  • Protection is required in only one or a few specific countries.

  • Rapid protection of inventions, trademarks, or designs in the target market is needed.

  • Full compliance with local laws and procedures is essential.

Why choose the Direct National Filing route?

Instead of using international filing systems for patents, industrial designs, or trademarks, many businesses choose to file directly in individual jurisdictions to optimize control and cost-efficiency.

Full Control Over the Registration Process

Applicants maintain complete control over dossier preparation, examination follow-up, and direct communication with each national IP office throughout the procedure.

Suitable for Targeted Protection in Specific Markets

An ideal approach when protection is required in only one to three key jurisdictions, without the broader coverage provided by systems such as the Hague Agreement.

Potential for Faster Grant in Priority Countries

If the national IP office operates with a fast examination timeline (e.g., the US, EU, Japan, Korea), applicants may obtain protection earlier compared to the international route.

Cost-Effective – No International Fees

Applicants pay only the national fees of each jurisdiction, without WIPO fees — a particularly budget-friendly option for startups and small or medium-sized enterprises seeking to optimize expenses.

Direct National Filing Procedure

Direct National Filing Procedure

Direct national filing (or “Paris Convention route”) is the method of applying for patent, trademark, or industrial design protection directly with the Intellectual Property Office of the target country, without using any international registration system. The standard procedure consists of the following 5 steps:

Step 1

Preparation of Application Documents

  • Drafting the complete specification (description, claims, abstract, drawings – for patents; trademark specimen and goods/services list – for trademarks; representations/drawings – for industrial designs)
  • Completing the official application forms required by the receiving Office
  • Preparing supporting documents: Power of Attorney, priority documents (if claiming priority), certified/notarized translations (where required), etc.
Step 2

Filing of Application & Payment of Official Fees

  • Submitting the application (in paper or electronically) to the Intellectual Property Office of the target country
  • Foreign applicants are generally required to appoint a local patent/trademark attorney or agent registered with the receiving Office
  • Payment of official fees: filing fee, examination fee (formality and/or substantive), publication fee, etc., in accordance with the fee schedule of the respective country
Step 3

Examination & Response to Office Actions

  • Formal (preliminary) examination: verification of compliance with formal requirements and completeness of the application
  • Substantive examination (where applicable): assessment of novelty, inventive step/non-obviousness, industrial applicability (for patents) or distinctiveness (for trademarks) and other substantive requirements
  • The applicant must monitor the prosecution and respond to office actions/notifications (including amendments and arguments) within the prescribed time limits
Step 4

Grant / Registration of the Title of Protection

  • If all requirements are met → the Office issues a Notice of Allowance / Decision to Grant / Intention to Register
  • Payment of the grant/registration fee and, where applicable, the first annuity/maintenance fee
  • Issuance and receipt of the official title of protection (Patent, Trademark Registration Certificate, Registered Design Certificate, etc.)
Step 5

Post-Grant / Post-Registration Maintenance & Management

  • Maintaining the validity of the title by timely payment of annuity/maintenance fees or renewal fees
  • Handling post-grant procedures: recordal of assignment, license, change of name/address/ownership, etc.
  • Monitoring the market and enforcing the intellectual property rights against infringement when necessary
Direct National Filing Services – Country-by-Country IP Protection

Direct National Filing Services – Country-by-Country IP Protection

We assist clients in securing intellectual property rights (patents, industrial designs, and trademarks) by filing applications directly with the Intellectual Property Office of each target country. This route allows applicants to claim priority under the Paris Convention or to file new applications without priority, provided the subject matter has not yet been publicly disclosed.

Prior Art & Registrability Search and Assessment

Conducting comprehensive prior art/availability searches in accordance with the legal standards and practices of each jurisdiction. Providing accurate risk analysis and registrability/protectability opinions.

Preparation of Application Documents in Compliance with Local Requirements

Advising on and preparing all required documents tailored to the specific formalities of each country (language, drawings, descriptions, specifications, classification of goods/services, etc.).

Filing through Local Qualified Representatives

Coordinating closely with our trusted network of local patent and trademark attorneys/agents in each jurisdiction to ensure timely and procedurally correct filing, with particular attention to priority deadlines.

Prosecution & Response to Office Actions

Monitoring examination progress at each IP Office and promptly handling all office actions, including formality examinations, substantive examinations, and third-party oppositions (if any).

Portfolio Management & Maintenance of Rights

Proactive monitoring and reminders for renewal/annuity payments for patents, trademarks, and registered designs. Centralized management of your entire global IP portfolio across multiple jurisdictions.

Questions

Frequent FAQs

Direct national filing is suitable when protection is needed in only one or a few specific countries, when faster protection is desired, or when strict compliance with local intellectual property laws is required.

Yes, if filing under the Paris Convention within 12 months from the priority date of the original application. If priority is not claimed, the application must be a new one, not previously published or disclosed.

The application must be prepared in the official language of the filing country. Translations must be accurate and often require certification by a local IP representative.

No, each country examines the application independently. A refusal in one country does not automatically mean refusal in others. However, the reason for refusal can provide useful guidance to adjust applications in other markets.

Yes, managing IP applications across multiple countries can be complex, as each country has its own laws, procedures, documentation requirements, fees, and renewal deadlines. Applicants must carefully track examination progress, respond to refusals, submit additional documents, and monitor renewal dates to maintain protection.

Therefore, applicants are advised to work with professional IP representatives or use a centralized management service to ensure timely handling of applications, compliance with each country’s regulations, and to optimize costs, time, and the effectiveness of protection.

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