Patent Cooperation Treaty (PCT) Patent

Background

The Patent Cooperation Treaty (the PCT) is an international treaty with more than 148 contracting states and it is duly administered by the World Intellectual Property Organization (the WIPO). Tanzania has been a party of the PCT since 14 September 1999 and a member of the Protocol on Patent and Industrial Designs within the Framework of African Region Industrial Property Organization (the ARIPO) the Harare Protocol of 1982 since 1 September 1999.[1]

The PCT provides a system for filing of international patent application (the Application). In addition, it allows the Applicant to obtain multiple patents in any of the contracting states from a single Application and subsequently it is also possible for a patent protection in Tanzania to be obtained by a ARIPO-PCT.[2]

The procedures for making the Application under the PCT are as follows:

Any Application for the protection of inventions made by the Applicant of any contracting states may be filed as international applications to the local patent offices of the contracting states. In Tanzania the local patent office is the Business Registration and Licensing Agency (BRELA) or to ARIPO offices. Applications are made to the Registrar of Patent (the Registrar). The Application must contain the following:[3]

  1. name and address of the owner, representative and inventor, other prescribed data concerning the Applicant, the inventor or any agent and the title of the invention;[4]  
  2. a description which shall disclose the invention in a manner which is sufficiently clear and complete for the invention to be evaluated and be carried out by a person skilled in the art;[5] 
  3. one or more claims which shall define the matter for which protection is sought, shall be clear and concise and be fully supported by the description;[6]  
  4.  one or more drawings (where necessary);[7] and 
  5. an abstract which shall serve as a technical information.[8]

The filed Application shall:

  1. be in a prescribed language;
  2. comply with the prescribed physical requirements;
  3. comply with the prescribed requirement of unity of invention; and
  4. be subject to the payment of the prescribed fees.[9]

The Application may contain a declaration of the Applicant claiming priority of one or more earlier Applications filed in the national application made by the contracting states to the Paris Convention for the Protection of Industrial Property.[10]

Upon receipt of the Application and after the expiration of thirty (30) months from the priority date, the Registrar must examine the Application. The examination is to determine if the Application has complied with all the formal requirements such as:

  1. signed by the applicant;
  2. contain the prescribed indications concerning the Applicant;
  3. contain a title;
  4. contain an abstract; and
  5. complies to the extent provided in the prescribed physical requirements.[11]

The Registrar would invite the Applicant to cure the defect within two (2) months from the date of the invitation to amend and meet the requirements upon which he will resubmit the Application. Where all the requirements are fulfilled, the Registrar shall accord as the international filing date the date of receipt of the required correction.[12]

No local patent office of any contracting State shall reject an Application on the grounds of non-compliance with the requirements of the Treaty without first giving the Applicant the opportunity to correct the said Application to the extent and according to the procedure provided by the national law for the same.[13]

Upon acceptance of the Application, the Registrar shall forward the to the International Bureau (the Bureau) and the International Searching Authority (the Authority) within five days prior to the expiration of the thirteenth (13th) month from the priority date upon payment of search fees by the Applicant.[14]

 The Application shall be considered withdrawn if the record copy has not been received by the Bureau within three (3) months from the date of the notification sent by the Bureau to the Applicant that no record copy was sent to it.[15]

Upon receiving the record copy the Bureau must notify the Applicant, Registrar and Authority. The notification shall identify the Application by its number, the international filing date, name of the Applicant and the filing date of any earlier Application whose priority is claimed.[16]

The Applicant may transmit the Application to any contracting state to the treaty or the Applicant may request the Bureau to transmit the Application to any contracting state and any contracting state may make request to the Bureau to be served with the copy of the Application or notify the Bureau that it does not wish to be served with a copy of the application.[17]

The Authority conducting the search as they are appointed by the Assembly. The appointed Authority can either be national office of the contracting state or intergovernmental organization. The appointed Authority’s approval shall be from the Assembly and between such national office or intergovernmental organization and the Bureau.[18]

The national law on patent allows the international-type search therefore the Application shall undergo the search as the search copy shall be submitted to the Authority who shall subject the application into international search (Search) to discover the relevant prior art. The Search shall be made on the basis of the claims, with due regard to the description and any of the drawings. The Application received by the Authority for the Search if it’s in a language which is not understood the Authority would require the Applicant to lodge the translation of the said language together with the national application.[19]

In the process of conducting Search by the Authority if it finds that the subject matter of the Application is not under obligation to be Searched or the description, the claims, or the drawings fail to comply with the prescribed requirements, Authority shall so declare and shall notify the Applicant and the Bureau by declaration that no international search report (Search Report) shall be established. An Application which does not comply with the requirement of unity of invention, the Authority shall invite the Applicant to pay additional fees. The Authority after conducting the Search shall establish a Search Report and a written opinion on those parts of the application which relate to the invention and transmit the same to the Applicant and the Bureau.[20]

The Authority after returning the Search Report and a written opinion if there is any amendment required to be done by the Applicant, the Applicant shall amend the Application within two (2) months from the date of transmission of the Search Report to the Bureau and to the Applicant or sixteen (16) months from the priority date and send the amended Application to the Bureau. If such amendment has any impacts on the descriptions and drawings the Applicant may file the amendment together with a brief statement explaining the effect of the amendment on the descriptions and drawings.[21]

The Bureau after receiving the amended Application together with brief statement shall communicate the Application supported with the Search Report to other contracting state who are parties to the treaty in which each communicated documents sent to them shall be translated in the language they understand. The communication to contracting states must be made before the expiration of thirty (30) months from the priority date. The local patent office which is BRELA or the Applicant may request the Authority to supply them with copies of the documents cited in the search report.[22]

The Bureau upon the expiration of eighteen (18) months from the priority date of that Application, the Bureau shall make an international publication (Publication) of the Application but the Applicant may request the Bureau to publish his Application any time before the expiration of eighteen (18) months and the publication shall also include the Search Report. If the Application contains expressions or drawings which in the opinion of the Bureau are contrary to morality or public order it may omit the expressions, drawings, and statements, from its publications and furnishing upon request individual copies of the passages omitted. There would be no publication if the Application is withdrawn.[23]

The effects of the publication of the Application is that it shall have the same effect as those provided under the national laws of the contracting state. Before the Application is published it shall remain confidential between the Bureau, the Authority and the Applicant unless there is a request or authorization from the Applicant to give access of the Application to the third parties.[24]

Upon permit from the Assembly the Applicant may be entitled to demand for the International Preliminary Examination (Preliminary Examination) which shall be submitted to an International Preliminary Examining Authority (Examining Authority) in which the demand of the Preliminary Examination shall be made in a prescribed form and language separately from the Application and the Applicant shall be required to pay prescribed fees for the Preliminary Examination. The demand shall indicate the contracting state or states in which the Applicant intends to use the results of the Preliminary Examination. If the Applicant does not elect the contracting state or states in which he intends to use the results of the Preliminary Examination, he shall elect later and the latter election shall be submitted to the Bureau.[25]

The Bureau per the administrative instructions shall after the demand has been filed but not before the publication of the Application, publish in the Gazette information on the demand and the elected States concerned.[26]

The Preliminary Examination conducted by the Examining Authority is to ascertain whether the claimed invention is patentable or not. The Examining Authority shall prove the criteria’s by conducting tests by taking into consideration of all the documents cited in the search report as to whether:

  1. the claimed invention appears to be novel by looking if it is not anticipated by the prior art;  
  2. does the claimed invention involve an inventive step by having regard to the prior art it is not at the prescribed relevant date obvious to a person skilled in the art; and
  3. the claimed invention is on the industrial applicable if according to its nature it can be made or used in the technological sense in any kind of industry.[27]

During the Preliminary Examination the Applicant shall have a right to communicate orally and in writing with the Examining Authority.[28]

The Examining Authority upon examining the Application and if the Application does not comply with the unity invention it shall invite the Applicant so as to restrict some of the claims so as the Application to comply with the requirements unless the Applicant pays special fees failure to abide to the invitation those claims shall be taken as withdrawn and the Examining Authority shall issue an International Preliminary Examination Report (the Report) which relates to what appears to be the main invention and shall indicate the relevant facts in the said report.[29]

If the Examining Authority finds that the subject matter of the Application is not under obligation to be examined or the description, the claims, or the drawings are unclear the Examining Authority shall not go into the question and shall notify the Applicant that no Report shall be established. Upon the examination by the Examining Authority it shall issue a Report in relation to each claim, whether the claim appears to satisfy the criteria of novelty, inventive step and industrial applicability.[30]

The Examining Authority after preparing the Report together with its annexures it shall transmit them to the Bureau and the Applicant, whereby the translation of the Report shall be the work of the Bureau while the annexures shall be translated by the Applicant into language which will be understood by each elected states. After the translation of the Report is done, the Bureau shall communicate the Report with its annexures in its original language to all the elected states while the Applicant shall serve the elected states with the translated annexures.[31]

The local patent office or the Applicant may request the Examining Authority to supply them with copies of the documents cited in the Report. The Report established by the Examining Authority  shall remain confidential between the Bureau and the Examining Authority unless upon request of the Applicant that the report be accessed by third party.[32]

The Applicant can at any time withdraw the states which he had elected to use the results of the Preliminary Examination. When all the states elected shall be withdrawn also the demand shall be considered as withdrawn. The Applicant shall within a prescribed period of time notify the Bureau on such withdrawal. [33]

The Bureau after being notified the withdrawal, it shall notify the elected Contracting States and the Examining Authority. The withdrawal of the demand or of the elected Contracting States shall not be considered as the withdrawal of the Application if such withdrawal is effected prior to the expiration of the thirty (30) months from the priority date.[34]

The filed Application made at the local patent office any amendments to the specification, claims and drawings may be made upon payment of the required prescribed fee until the decision to grant the patent becomes final, however the said amendments should not be going beyond the scope of the application as originally filed. Upon the completion all the requirements the Bureau shall grant the patent to the Applicant and provide international protection of that patent over other 148 contracting states.[35]


[1] Section 3bis of the African Regional Intellectual Property Organization. Harare Protocol on Patents and Industrial Designs.2020.

[2] Ibid.

[3] Article 3(1) Article 9(1) & Article 10 of the Patent Cooperation Treaty.

[4] Article 3(2) and article 4 of the Patent Cooperation Treaty.

[5] Article 3(2) and article 5 of the Patent Cooperation Treaty.

[6] Article 3(2) and article 6 of the Patent Cooperation Treaty.

[7] Article 3(2) and article 7 of the Patent Cooperation Treaty.

[8] Article 3(3) of the Patent Cooperation Treaty.

[9] Article 3(4) of the Patent Cooperation Treaty.

[10] Article 8 and Article 11(1)(iii) of the Patent Cooperation Treaty.

[11] Article 14(1) of the Patent Cooperation Treaty.

[12]Article 11(2) (a & b), Article 14(1)(b) & 14(2) and Article 23 of the Patent Cooperation Treaty.

[13] Article 26 of the Patent Cooperation Treaty.

[14] Article 12(1, 2 & 3) of the Patent Cooperation Treaty and Rule 22.1 & Rule 22.3 of the Regulations under the Patent Cooperation Treaty.

[15] Ibid.

[16] Rule 24.2 of the Regulations under the Patent Cooperation Treaty.

[17] Article 13(1) & 2(a, b & c) of the Patent Cooperation Treaty.

[18] Article 16 of the Patent Cooperation Treaty.

[19] Article 15 of the Patent Cooperation Treaty.

[20] Article 17 & 18 of the Patent Cooperation Treaty.

[21] Article 19 of the Patent Cooperation Treaty and Rule 46.1 of the Regulations under the Patent Cooperation Treaty.

[22] Article 20 of the Patent Cooperation Treaty.

[23] Article 21 of the Patent Cooperation Treaty and Rule 44bis.2 of the Regulations under the Patent Cooperation Treaty.

[24] Article 29 & 30 of the Patent Cooperation Treaty.

[25] Article 31 of the Patent Cooperation Treaty.

[26] Rule 61.4 of the Regulations under the Patent Cooperation Treaty.

[27] Article 33 & 34(2) of the Patent Cooperation Treaty.

[28] Ibid.

[29] Article 34(3) of the Patent Cooperation Treaty.

[30] Article 34(4) & 35 of the Patent Cooperation Treaty.

[31] Article 36 of the Patent Cooperation Treaty and Rule 71.1 of the Regulations under the Patent Cooperation Treaty.

[32] Ibid.

[33] Article 37 of the Patent Cooperation Treaty.

[34] Ibid.

[35]Article 41 & 43 of the Patent Cooperation Treaty.

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