PCT PATENT FILING IN NIGERIA
PCT NATIONAL PHASE APPLICATION IN NIGERIA
A Patent and Cooperation Treaty (PCT) patent application filing provides a process for reserving an applicant’s priority right to file an existing patent application in foreign countries.
Generally Patents granted are territorial in nature. This means that the exclusive rights granted are only applicable in the country it is filed and granted. Thus, any invention filed and granted in Nigeria is only applicable in Nigeria in accordance with the Patents and Design Act. A single Patent obtained cannot be effective in every country of the world. The PCT application process however gives the inventors an ample opportunity to have registration’s priorities on their inventions in PCT member countries before any other persons in such countries could file to register same inventions.
Patent and Cooperation Treaty (PCT)
The Treaty is a legal agreement entered into between various countries. The main purpose of PCT is to streamline the initial process of filing by making it easier and cheaper to file a patent application in many countries.
The concept of PCT patent application is to enable an inventor to have exclusive commercial rights to Patents registered in another country. It is an international development that allows an inventor to make a single patent application that has the same national applications filed in separate PCT states. With this application, a patent holder can register a single international patent instead of filing several separate patents in different countries and seek protection for the invention registered.
The treaty defines the patent rights granted between contracting states. It is a single application filed at one of the international receiving offices that grants the applicant the right to file future national patents application in any of the contracting states.
PCTs are granted and used by major corporations, research institutions and universities when they seek international patent protection. It can also be used by small medium sized enterprises (SMEs) and individual inventors.
Procedure for PCT Patent filing system
It is important to note that an inventor entitled to file an international patent application must be a national or resident of the PCT Contracting State, that is, countries that are members of the International Treaty.
The PCT Procedure consists of two stages: the first step begins with filing an international application while the second phase begins with the international application entering into number of countries to enable it being evaluated in compliance with the patent laws in each individual country where the inventor wants the patent.
The steps include the following:
- Filing: An inventor looking to register an internationally recognized patent must file an application with the national patent office and must comply with the PCT formalities requirement in one language and pay the required fees of $4,000 (Four Thousand Dollars). When an inventor files a PCT application, the applicant incurs a single initial filing fee of $4,000 but postpones in additional expenses of the national patent process for 30 months from the applicant’s priority dates.
- International Search: The International Searching Authority (ISA) identifies the published patent documents which may have an influence on whether an invention is patentable and establishes a written opinion on the patents invention potential patentability. At this stage the applicant has the option of withdrawing the application in light of the search report or opinion.
- International Publication: where there is no withdrawal of the application after an international search has been conducted, the World Intellectual Property (WIPO) publishes the international application shortly after the expiration of 18 months from the Earliest filing date, the content of the international application is disclosed to the world.
- Supplementary International Search: A second searching authority identifies the applicants request, the published documents which may not have been found by the first ISA which carried out the main search because of the diversity of prior art in different languages and different technical fields.
- The last step which is optional involves the International Preliminary Examination where one of the ISAs at the applicants request carries out an additional patentability analysis, usually on any amended version of the patent application. At the end of the PCT procedure, the applicant, after 30 months from the earliest filing date of the application from which priority is claimed starts to pursue the grant of the patents directly before the national patent offices of the Country in which it is to be obtained. The priority period means the period of 12 months from the filing date of the earlier application whose priority is claimed in the international application. The day of filing of the earlier application is not included in this period. Subject to what is said below, in order to validly claim priority, an international application must always be filed within the priority period; otherwise, the right of priority will be lost.
An international Patent Application can be filed at the national patent office or directly with the World Intellectual Property Organization (WIPO) if permitted by the state national security provisions.
For an invention to be protected in a foreign country, the application must be nationalized in particular countries the applicant wants the patent protection to take effect. For example, if an applicant wants to have foreign protection in the USA, China and Europe, the applicant would need to nationalize the pct application in each of these jurisdictions in order to seek protection there.
There are currently 152 PCT contracting states that signed the international treaty. To name a few; Nigeria, Angola, Japan, Canada, Tunisia, Australia etc
In conclusion, the decision on granting patents is exclusively by the National or Regional offices in the national phase. By starting a PCT process, the inventors can seek the protection of patents for inventions in every country that is a member to the PCT.
If an inventor wants to obtain a patent in a particular country, it must pass through the nationalization stage in the country where the patent is to be received and the inventor must file for the application claiming the benefit of the foreign priority directly in PCT countries within 12 months of filing the international patent application.
Written by the Intellectual Property Law Team at the Resolution Law Firm