FOREIGN PATENTS AND THE PCT

The popular term "worldwide patent" is based on a fallacy. "Worldwide patents" do not exist. In general, separate protection must be applied for in each country individually. However, a handful of regional patent organisations do exist which cover patent protection in more than one country, for example, ARIPO, the Eurasian Patent Office, the European Patent Office, the Gulf Co-operation Countries, and OAPI.

The first step (for our South African clients) to obtaining patent protection in several countries is normally the filing of a provisional patent application at the South African Patent Office.

Thereafter, within 12 months of the filing of such South African provisional patent application, you will need to file a complete patent application in each country of the world in which you require protection (including South Africa) so as to claim the earlier priority date of your South African provisional patent application under the International Patent Convention (also referred to as the Paris Convention). Most important countries are members of this convention. However, it is important to notify us at your very first contact with us of the countries in which you wish to obtain patent protection as patent applications should be filed in all countries which are not members of the Paris Convention before your invention is disclosed to the public and, preferably, as soon as possible.

It is important to note at this stage that many countries are members of the PCT (Patent Co-operation Treaty) and instead of filing separate Paris Convention applications for these countries a single PCT application is normally recommended before the conclusion of the 12 month Convention period.

The PCT Route

The PCT (Patent Co-operation Treaty) is a route to obtaining the grant of separate (national) patents in 137 countries (as of 28 May 2007), including South Africa. A single PCT application is filed, designating the countries envisaged at that stage for protection. A key advantage of this route is that costs are contained at this stage to between about R 25 000.00 and R 35 000.00, for an invention of average complexity, for the preparation and filing of the PCT application if filed in the name of a private individual who is a national of South Africa or more than one such individual. If even one of the applicants is not a private individual who is a national of South Africa then extra costs of about R 15 000.00 can be expected.

The PCT route includes, at no extra charge, an international search by an International Searching Authority, such as the European Patent Office. This will give a good indication of the patentability of the invention before patenting is proceeded with in the individual PCT contracting states.

By requesting an international examination, the applicant will be afforded the opportunity to argue and/or amend the application in light of the Examiner's objections with a view to obtaining a clear preliminary examination report. The costs of requesting such international examination are about R 9000.00 (at current exchange rates) if all the applicants are private individual who are nationals of South Africa. If even one of the applicants is not a private individual who is a national of South Africa then extra costs of about R 15 000.00 can be expected. The costs of arguing and/or amending the application in light of the Examiner's objections are typically between about R 5 000.00 and R 10 000.00 depending on the complexity thereof.

Before expiry of a 30 month period from the earliest priority date (normally the date of filing of the South African provisional patent application, as described above), separate national or regional patent application(s) must be filed at the usual fee levels.