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PCT application

By Anri Bezuidenhout (Candidate Attorney) Adams & Adams

A common misconception with respect to patents is that one can obtain an ‘international patent”, i.e. a single patent that applies worldwide.  No system for obtaining such a patent exists.  Generally speaking, a patent application must be filed in each country or region (when applicable) in which patent protection is desired.  For the same invention by the same inventor, such applications must, also generally speaking, be filed simultaneously in light of novelty and international convention considerations.

The necessity to file patent applications in a plurality of countries simultaneously places a heavy cost onus on applicants, often at an unassessed risk that a patent may not be obtainable for the invention based on inherent, but underlying, non-compliance with the patentability requirements of novelty and inventiveness.

To allow prospective applicants to take a more informed decision in incurring such costs, a large number of countries (about 150) entered into a treaty called the Patent Cooperation Treaty (PCT).

The PCT makes it possible for applicants to file a single patent application in terms of the PCT, thereby to  reserve their rights to seek patent protection for their inventions in the PCT member countries while obtaining, as part of the PCT process, an authoritative indication of patentability.  Thus, applicants are more comorehensively informed in deciding on whether or to file national applications in member countries.  Regrettably, the PCT does not, however, obviate the requirement to file national applications in each country or region (where possible) in which protection is required.

The abovementioned indication of the patentability of the invention is provided as a result of “preliminary” substantive examination of the definition of the invention during the pendency of the PCT application.  This examination is performed by an entity that is appointed by the applicant (usually the European Patent Office, the US Patent Office, the Austrian Patent Office or the Australian Patent Office).  The examination is preliminary in the sense that no national patent office is bound by it.

Once in possession of the results of the preliminary examination, the applicant also has an opportunity to amend its definition of the invention, if it deems it necessary.  In this way the applicant can attempt to pre-empt objections that may have been raised to the original definition of the inveniton in subsequent national application (bearing in mind that subsequent national applications would in any event also be substanively examined for patentability of the invention). In this manner, the applicant can possibly limit the costs of subsequently prosecuting national applications.

The PCT therefore is, essentially, an enabler of a more informed and cost effective pursuit of foreign patent protection.  Its use is highly recommended.

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