Register a PCT patent

You can draft and register your own International (PCT) patent application yourself!

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 R45,000 and R85,000 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 and take full advantage of the generous 75% to 90% rebates in respect of certain PCT filing fees available to individuals who are nationals and residents of South Africa.

So how do you file your own PCT patent application?

Your PCT patent application must include:

• the PCT request form;
• the PCT patent specification (including claims); and
• the abstract – the abstract is a summary of the invention, limited to about 150 words.

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:

• 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 Otherwise, the application will be deemed withdrawn;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 necessitate 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 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, conduct a patent search to confirm that no potentially damaging prior art documents were disclosed during this period (i.e. between the priority date and the PCT filing date).

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”.

Use GlobalIPCo to file South African and Nigerian national phase patents. National phase patents in most other countries will require you to approach a patent attorney. 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.

Foreigners, consider filing national phase patent applications in South Africa for only $585 via S&Z. Alternatively, instruct filing of your South African national phase patent application online via GlobalIPCo for only $399.