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PCT – the Patent Co-operation Treaty

Patent protection can be obtained for inventions in over 153 countries via the Patent Co-operation Treaty (PCT). New Zealand businesses have eagerly adopted this procedure since New Zealand became a member of the PCT in December 1992.

A PCT application does not result in the grant of a ‘world patent’. Instead, such PCT applications extend the deadline for lodging a national phase patent application in a PCT member country or region by a minimum of 18 months.

Advantages of a PCT application

1. Prior searching and examination

A comprehensive international patent search is conducted and a written opinion on patentability given. This means that the application is examined before the bulk of the costs associated with filing patent applications overseas are incurred.

2. Costs are delayed

The cost of filing patent applications overseas can be deferred between 30-31 months from the date of filing the New Zealand patent application, while maintaining options to obtain patents in more than 141 countries.

3. Decisions on where to patent are delayed

All countries to which the Patent Co-operation Treaty applies are nominated in the initial application. However, the final decision on where to patent an invention can be deferred by up to 31 months from the date of filing the New Zealand patent application.

Before making this decision, you are able to assess the strength of the patent during the international search and examination phase, as well further time to explore the commercial potential of the invention and the countries in which it has become apparent there is a market for the invention.

PCT procedure

The usual procedure for securing patent protection under the PCT is summarised below with reference to the flowchart later in this section.

Fiiling the application

A PCT application accompanied by a complete patent specification must be filed at the Intellectual Property Office of New Zealand (IPONZ) before the invention has been disclosed publicly anywhere in the world, or within 12 months of filing an application to patent the invention in New Zealand. IPONZ acts as an agent for the World Intellectual Property Organisation (WIPO) in Geneva which administers the PCT.

Time frame

The time frame indicated below for the occurrence of the various steps relates to the usual case where a PCT application is filed claiming priority from an initial New Zealand application.

International search

A comprehensive international search is conducted within 16 months of filing the New Zealand application. The international search will identify relevant written disclosures (“prior art”) concerning the general subject matter of the invention.

The international search provides a useful indication of the extent to which the invention is novel (and therefore patentable). If the search indicates the invention is not particularly novel, then you may decide to abandon the application before committing to the expense of filing patent applications overseas.

With the international search you also receive a written opinion on patentability which provides you with a preliminary indication of the strength of any patent that may be obtained under national phase.

Within two months of receiving the search report you may amend the patent claims if necessary, to distinguish the invention from any prior art disclosed by the patent search.

International preliminary examination

Within 22 months of filing the New Zealand application (or within 3 months of the date of the search report and written opinion), you have the option of filing a demand requesting examination of the PCT application.

During International Preliminary Examination, you are given the opportunity to respond to the written opinion, either by way of amendments or corrections, or by argument if you think the examiner’s comments are not justified. At the end of this process you will have a strong indication as to the strength of any patent that might be obtained when patent applications are filed in the countries of interest at the end of the PCT process.

This stage is called International Preliminary Examination, because no decision is made by an examiner as to whether or not a patent should be granted. That is left to the examining authority of each country in which you seek protection during the National Phase.

National phase

In most cases the National Phase occurs within 30 months of filing the New Zealand patent application. At this stage, patent applications must be filed in each of the countries nominated in the PCT application where you still want to obtain patent protection. It is at this time that the costs of filing a patent application in each country of interest are incurred.

Once national phase has been entered the application is subject to the examination processes of each country. Information regarding specific time frames and deadlines for New Zealand national phase applications can be found in the following sheet: “Timeframe for examination of a national phase patent application in New Zealand“.

A patent application filed under the Patent Co-operation Treaty could have effect in the countries covered by the regional and national patents listed by the World Intellectual Property Office as PCT Contracting States.

Convention applications

If you are only interested in obtaining patent protection in around one to three key overseas countries, an alternative to filing a PCT application is to file a convention patent application directly into the country or countries of interest within 12 months of the filing date of the New Zealand application. However, adequate time needs to be allowed for obtaining any necessary translations or legalization of the priority documents.

In most countries, if an overseas application is filed within 12 months of the filing date of the New Zealand patent application, the Paris Convention states the member countries to the convention will recognize the New Zealand filing date as a priority date in the country that a convention application is made.

For more detailed information about the PCT click on the headings below, or to learn more about the expertise of our Patent team click here.