14 August 2013

Where Can You Not Get a Patent Via the PCT?

PCT-148On 3 August 2013 Saudi Arabia became bound by the provisions of the Patent Cooperation Treaty (PCT), while the Islamic Republic of Iran will become bound on 4 October 2013.  Any international patent application filed on or after that date will therefore entitle the applicant ultimately to proceed in any of 148 contracting states.

So many countries are now bound by the PCT that it is almost easier to think in terms of which countries are not members of the international application system than to keep track of those which are.  If you want to file a patent application, and to keep your options open for as long as possible (typically until at least 30 months after your initial priority filing date), then a PCT application is definitely the way to go about it.  However, you do need to think about whether there are any countries which may be important to you, but which are not PCT members.

So which countries are not PCT contracting states?  And how many of them might you really care about?

This article attempts to answer these questions, although of course some disclaimers are necessary.  While I have made every effort to verify details from multiple sources, for some countries reliable, up-to-date information is not easy to come by.  To the extent that the information here is accurate, I can vouch for it only at the current time, i.e. 14 August 2013.  In other words, despite all due care, I take no responsibility for the consequences of relying on this information, and recommend that you always seek professional advice appropriate to your specific circumstances.

A Brief Overview of the PCT

Many readers will already be familiar with the PCT system – feel free to skip ahead!  For those who need a quick primer, here is a summary of what the World Intellectual Property Organization (WIPO) has to say about the basics of the system.

The PCT enables an applicant to seek patent protection for an invention simultaneously in each of a large number of countries by filing an ‘international’ patent application.  If you are a national or resident of a country which has signed up to the PCT, you may file an international application, typically with your local national and/or regional patent office.

It is important to understand that the PCT creates a simplified international filing system.  It is not a system for granting patents.  To obtain a patent in any specific member country (or region) it is necessary, typically within either 30 or 31 months from an initial (priority) application filing, to file appropriate national or regional patent applications based upon the PCT application documents.  These so-called ‘national phase’ applications are subject to the normal examination process in each individual patent office.

A major advantage of the PCT system is thus that it enables the substantial costs of multiple national filings to be delayed.  In many cases, 30 months is sufficient time to evaluate the commercial prospects of an invention, and develop the business case for filing national applications in those countries in which a patent will deliver sufficient value to justify the costs.

Definition of a ‘Country’

One problem with trying to identify all of the ‘countries’ in which patents cannot be obtained via the PCT is that at the smaller, and less stable, end of the spectrum the very notion of a country is often contested.  I do not want to become bogged down in debates over nationhood, so I have simply, and somewhat arbitrarily, based my definition on the list of 206 Sovereign States identified by Wikipedia.

Accessible Via the PCT

For the purposes of this article, I treat a country as being accessible via the PCT if it is possible, by some mechanism, to obtain enforceable patent rights in that country based on a PCT application (filed on or after 4 October 2013 – such that both Saudi Arabia and Iran are included).

A number of countries are accessible, by this definition, even though they are not PCT members.  For example, there are various former British colonies, such as Fiji and the Solomon Islands, in which a granted UK patent may be used as the basis for a local registration, for up to three years after grant.  The UK patent may itself be derived from a PCT application, either directly or via the European Patent Office (EPO).  The UK Intellectual Property Office provides a guide to extending UK IP rights abroad.

The Special Administrative Regions (SARs) of Hong Kong and Macau have systems enabling applications filed in China to be re-registered without separate examination.  A Hong Kong re-registration can also be based on a UK or European application.  In all cases, the Chinese, UK or European application may be derived from a PCT application.

Two countries – the Cook Islands and Niue – have no patent registration system of their own, but permit New Zealand patents to be enforced via their courts.  A New Zealand patent may be obtained via the PCT route.

There are also some countries – such as France – which do not permit the direct filing of national phase applications, but which are accessible through a PCT application by way of a regional patent office, such as the EPO.  I count these as being accessible also (as does WIPO, in its list of PCT Contracting States).

Not Accessible By Any Means

There is obviously little point in concerning ourselves with countries which do not have a functioning patent system.  Clearly it is not possible to obtain a patent via the PCT in a country where it is not possible to obtain a patent at all!  But, then again, if you could not have obtained a patent anyway, you have lost nothing by filing only a PCT application.

The following countries – as far as I have been able to ascertain – simply have no laws to enable patents to be obtained and/or enforced: Afghanistan; Eritrea; Holy See (Vatican City State); Maldives; Marshall Islands; Micronesia; Myanmar; Palau; South Sudan; and East Timor.

Also – as far as I could determine – Andorra, Suriname, Somalia and Kuwait have patent laws, but do not currently have functioning systems to enable patent applications to be filed, or patents to be granted.

So That Leaves…

The following is a list of countries in which there is some form of functioning patent system, but which cannot be accessed via the PCT.  For any of these countries, it is necessary to file an individual national application, typically at the same time as any PCT application filed to reserve rights in most other countries.
  1. Argentina
  2. Bahamas
  3. Bangladesh
  4. Bhutan
  5. Bolivia
  6. Burundi
  7. Cambodia
  8. Cape Verde
  9. The Democratic Republic of the Congo
  10. Djibouti
  11. Ethiopia
  12. Haiti
  13. Iraq
  14. Jamaica
  15. Jordan
  16. Lebanon
  17. Mauritius
  18. Nepal
  19. Pakistan
  20. Palestine (both Gaza and West Bank)
  21. Paraguay
  22. Taiwan
  23. Tonga
  24. Uruguay
  25. Venezuela
  26. Yemen
If you have an invention relating to some regionally-significant technology (e.g. oil exploration or extraction in the Middle East or South America) then there may be a handful of countries on this list which could be important to you.

However, for inventions relating to more common industrial or consumer products and processes the only country on the above list (of 26) which jumps out as potentially significant is Taiwan.  It is hard to imagine that missing out on securing patent rights in most of the other non-PCT countries would, in most cases, be commercially damaging.


The PCT system is rapidly approaching its goal of becoming a ‘one-stop-shop’ for convenient international patent filing.

It is now almost – though perhaps not quite – possible to file a PCT application with virtually no regard to the possibility that it might not cover some country which turns out to be an important market for the invention. 

No doubt the list above will only become shorter as time goes by.


Rubal Walia said...

Quite an informative blog, Mark!

Mark Nowotarski said...

Excellent article. Thanks. You are right. Taiwan does leap out. Argentina as well.

ak said...

Worth mentioning, Mark, one of the big advantage of the PCT route is the ability to claim the earlier priority, as recited in the PCT Application

Mark Summerfield said...

Certainly filing via the PCT route can simplify claiming priority, in that you can, for the most part, effectively do it just once in the international application, and it will carry over into the national phase applications.

However, the right to claim priority is found in the Paris Convention, and countries (such as Taiwan) which are not members of the Paris Convention generally have alternative bilateral agreements to enable the recognition of foreign filing dates.

The current definition of a 'Convention country' in the Australian Patents Regulations (Reg 1.4) encompasses all signatories of the Paris Convention, as well as all full members of the World Trade Organisation (which includes Taiwan). Priority can be claimed in Australia from any application filed within the previous 12 months in any of these countries.

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