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Toolkit - File your own PCT patent

Drafting and filing your own International (PCT) patent application for R8,250

The 12 month period from the date of lodging your provisional patent application is about to expire and you need to pay your patent attorney between R13,700 (MyPatent fee) and R55,000 to lodge a PCT patent application and extend your right to file corresponding foreign patents for a further 18 months. Or do you?

Applicants can file PCT patent applications themselves for only R4,500 and take full advantage of the generous 90% rebate in respect of certain PCT filing fees that is available to individuals who are nationals and residents of South Africa.

Tip: To ensure that you select the most cost effective options and maximize the rebate, use the PCT cost calculator available at www.mypatent.co.za.

So how do you file your own PCT patent application? Although a PCT patent application can be filed directly with the International Bureau in Geneva, the easiest way is to file the PCT patent application at the South African Patent Office (CIPRO) (DTI campus, Block F, 77 Meintjies Street, Sunnyside, Pretoria). CIPRO will in turn forward your application to the International Bureau.

Your PCT patent application must include:

a covering letter - it is advisable that you take two copies of the covering letter to CIPRO - one for lodgment and one to be stamped and retained by you as proof of lodgment;

the PCT request form in triplicate - sample and editable PCT request forms are available at http://www.wipo.int/pct/en/forms/index.htm;

the PCT patent specification (including claims) in triplicate - the specification must start with a heading on the front page; and

the abstract in triplicate – the abstract is a summary of the invention, limited to about 150 words.

(A complete sample application (3MB) is available at www.mypatent.co.za)

Cost saving tip: Consider asking your patent attorney to include claims in the provisional patent application so that you may file the same specification as a PCT patent application yourself twelve months later.

Note: You are not required to file your PCT patent application through the same firm that filed your provisional patent application.

The important events and dates in the PCT process are summarized below:

within one month from filing the PCT patent application, the Receiving Office will post a notification of the PCT patent application number and a request to make payment of the PCT fees (transmittal fee, search fee and filing fee);

the PCT fees must be paid within one month of filing the PCT patent application. Otherwise, the application will be deemed withdrawn;

the International Search Authority will issue a Search Report and a Written Opinion within ±16 months from the priority date. You should critically review all documents marked with an “X”, as these documents will most probably require you to make amendments to the claims;

you have a first opportunity to submit amendments (under Article 19) to the claims by letter (including substitute amended pages) to the International Bureau. This amendment should be submitted within ±2 months from the transmittal date of the Search Report;

the PCT patent application is published ±18 months from the priority date. This does not require any action from your end;

you have a second opportunity to amendments the PCT patent application (under Article 34), provided that you file a Demand within ±3 months from the transmittal date of the Search Report. This time, amendments can be made to the claims, description and drawings; and

the PCT patent application will “enter the national phase” (i.e. be filed in various countries) around 30 months from the priority date.

Tip: Provided that the invention was kept secret up to the date of filing the PCT patent application, it is possible to abandon the priority claim and thereby extend the deadline for entering the national phase by 12 months. However, before doing so, confirm that no potentially damaging prior art documents were disclosed during this period (i.e. between the priority date and the PCT filing date) by using the search tools available at www.mypatent.co.za.

To “enter the national phase”, you must instruct foreign patent attorneys to file the PCT patent application (as amended) in each country where you wish to obtain patent protection. These patents are known as “national phase patent applications”.

The cost of filing a national phase patent application is between R1,950 and R30,000, depending on the country and firm selected. Thereafter, over the next one to three years, you can expect to pay one to three times the filing fee to prosecute each national phase patent application to grant.

Tip: The cost of national phase patent applications is highly variable and depends largely on the patent firm selected to file the application. Feel free to contact us for recommended foreign patent firms.

For further information relating to the filing of PCT patent applications, please visit the following link: http://www.wipo.int/pct/en/ .

Last Updated ( Thursday, 18 February 2010 )