Introduction

With the traditional patent system, if patent protection is sought in other countries, individual patent applications need to be made for each respective country. This involves the preparation and filing of several patent applications, translation costs, the services of patent attorneys in these countries, and fees to the various patent offices – all resulting in considerable costs.

Under the traditional system, the patent office in each country (where protection is sought) must carry out formal examination of the application and search procedures i.e. duplication of effort.

In order to overcome some of these problems the Patent Co-operation Treaty (PCT) came into effect in 1978. This treaty came into effect in South Africa in March 1999. There are at present 142 countries (including South Africa) that are part of this international treaty.

What is the PCT?

As the name (Patent Co-operation Treaty) suggests, the PCT is an agreement for international co-operation in the field of patents. More specifically, it is a treaty that provides for rationalisation and co-operation with regard to the filing, searching and examination of patent applications.

The PCT does not provide for the granting of "international patents".

• The task and responsibility for the actual granting of patents remains in the hands of the Patent Offices in the designated countries where protection is being sought.

• The PCT streamlines the international search and preliminary examination process and this result in cost cutting.

• The PCT provides for the formal examination of the international application by way of a single patent office – the Receiving Office.

• Each international application is subjected to an international search and the searching authority provides a report on whether any similar inventions have been lodged. This enables the applicant to decide whether or not the invention is patentable.

• The PCT provides a centralised international publication of international applications together with related international search reports. It provides the option of an international preliminary examination and provides reports that assist the Patent Offices in the various signatory countries, with an opinion as to whether the claimed invention meets certain international criteria for patentability.

• These services obviously streamline the traditional procedures for patent application to foreign countries, and result in considerable reduction in time and costs.
  • Under the "traditional" system, the applicant for a patent registration:
    1. Files for a provisional patent application, and then
    2. Within 12 months applies for a "complete patent application" and
    3. At this point the applicant would file patent applications abroad to designated countries (as required), under the Paris Convention.
    4. These international patent applications result in
       • multiple formality requirements
       • multiple searches
       • multiple examinations and procedural formalities
       • translations and national fees, all payable after the patent is lodged in each country.
  • With regard to the PCT system, when an international application is made, a further 18 months is added for the international search and international publication i.e. up to 31 months before the applicant has to finally decide whether or not to proceed with the actual patent applications in other designated countries.
  • Thus the applicant, under the PCT system "buys time" before committing to a decision whether or not to apply for patents in other countries and incurring the considerable costs involved in this process.

The PCT System Procedures

• If an applicant has come up with an invention that he or she wishes to patent in a number of countries, the applicant is advised to utilise the Patent Cooperation Treaty (PCT) prior to actually lodging patent applications in these countries – the benefits of the PCT system have been outlined above. However certain "benefits" or "discounts" can apply – and CIPRO is able to provide advice and guidance in respect of how to qualify for these.
• The applicant or patent attorney will complete a "Patent Cooperation Treaty Request Form" (in triplicate), together with the respective specifications, drawings etc.
• The PCT office at CIPRO processes this application and calculates the costs involved.

NOTE:

• Any national or resident of South Africa can file an international application at the Receiving Office in South Africa.
• The PCT system is a patent "filing" system, and is not a patent "granting" system. There is no "PCT patent".
• The PCT system provides for:
  • An international phase comprising:
    • Filing of the international application
    • International search
    • International publication and
    • International preliminary examination (optional)
  • A national/regional phase before designated Offices and/or Elected offices.
• The decision on granting patents is taken exclusively by national or regional offices in the national phase.
• Only inventions may be protected via the PCT by applying for patents, utility models and similar titles.
• Design and trade mark protection cannot be obtained via the PCT. There are separate international conventions dealing with these types of industrial property protection (The Hague Agreement and the Madrid Agreement, respectively). SA is not yet a member of these agreements.