PCT PATENT APPLICATIONS

The cost of filing foreign applications in several countries may be prohibitively high for many inventors. The Patent Convention Treaty (PCT), to which South Africa is a signatory, allows the patent applicant to commercially exploit the invention for a longer period before applying for foreign patent protection. 

The PCT makes it possible to delay the filing of multiple patent applications in a number of countries. The treaty provides a relatively inexpensive method of filing a single patent application designating all PCT member states. At present, there are over one hundred and thirty member states of PCT. A full list of member states may be obtained here. We will also be pleased to provide detailed advice on the filing of PCT patent applications.

PCT PROCEDURE

PCT patent applications may be filed as Convention patent applications within the twelve months Convention period from the filing of a first patent application in a Convention country. Alternatively, a PCT patent application may be filed as a first patent application. This system provides, in addition to the delaying of the costs of multiple patent applications, for an international search authority to conduct a patentability search and prepare a written opinion in respect of the invention. The search report and written opinion issue about 4 months after filing although delays are not unusual.

The search report is accompanied by copies of each relevant prior art document cited. The written opinion explains the relevance of each prior art document. In some cases, the search report and written opinion may establish clearly that valid patent protection is unlikely to be granted for the invention. However, the results of the search may be positive and may indicate that there is a good chance of a patent being granted for the invention in any examining country, either in the form as originally filed, or in amended form. This is a good indication of the likelihood of the later patent applications proceeding to grant. Within eighteen months of the priority date, the application and search report are published.

After the search report and written opinion issue, the applicant has the option to demand internationally preliminary examination upon payment of an examination fee. It is at this stage that the applicant may present arguments to the examiner to convince him of the patentability of the invention, if the written opinion was unfavourable. He may also amend the patent specification, taking into account the results of the search report. The examiner takes the arguments and/or amendments into account and issues an international preliminary report on patentability. This provides the applicant with a strong indication of the prospects of success in obtaining patents in other countries, before incurring the cost of filing those applications.

The entire PCT procedure takes 18 months from the filing of the PCT application. This allows for the national or regional patent applications to be filed in countries or regions where protection is required (this includes the EPO) within 30, or in some cases 31, months after filing of the first or original patent application. In many countries, the national phase patent application is not re-examined and weight is given to the International Preliminary Examination Report. However, in some countries the national application is re-examined and processed it as if it had been an ordinary patent application filed in that country.

The PCT does not replace the usual filing of foreign patent applications individual countries but it extends the deadline for doing so. The costs of the PCT patent application are accordingly additional to the final costs of obtaining the national or regional patents. The cash flow advantages, however, can make a PCT patent application well worthwhile and it also enables the decision on which countries to be covered to be delayed by a further 18 months over and above the normal 12 months convention period.

It should be emphasized that the PCT patent application does not lead to the grant of a PCT patent (which does not exist), but is merely a means for facilitating the filing of patent applications. Another important advantage of the PCT is that it provides a search and examination facility at relatively low cost. This allows for tailoring the patent specification according to the results of the international search and the international preliminary examination.

COSTS

A South African national who is also resident in South Africa may take advantage of a substantial reduction in the filing fees and examination fees under the PCT system. If there is more than one PCT applicant, all applicants must be South African and resident in South Africa to be entitled to the discount.

REQUIREMENTS

In order to file a PCT patent application, the specification of the priority application may have to be amended to put it in a form which is suitable for PCT filing. Alternatively, where no prior applications has been filed, a specification will have to be drafted from scratch. Certified copies of the priority documents are required, as are suitable powers of attorney. The PCT patent application, including the specification and all documents associated with it, may be filed in English.

CAUTIONARY NOTE