Andrey Zharov, Patent Counsel
Uyo Jummai Ani, PR Director for IPR GROUP
Quite a number of companies and individuals are interested in filing patent applications to secure protection for their intellectual property, and a huge amount of these people do not have adequate information on the steps and processes required. In the search for answers, various questions begin to surface. Questions like, “Must my invention be registered in my home country or country of residence?”. “How long will the process take?”. “How about if I’ve already disclosed details about my invention to close friends and family, does this matter?”. “I already registered part of my invention years ago, but now it has been modified; can the new parts be registered?”. “I would like to register in all the countries in the world in the most convenient and less expensive way; perhaps I can file one application; and how long will it take?”.
Well, hopefully this article will answer a number of these questions and more, especially in the region of the CIS, which include the following countries: Russia, Ukraine, Kazakhstan, Belarus, Armenia, Azerbaijan, Kyrgyzstan, Moldova, Tajikistan, Turkmenistan, Uzbekistan and Georgia.
While some inventors require a single national application; for the reason that most companies with regard to inventions usually operate in a region or at least multiple countries, registration in multiple states are often required; and for this the Patent Cooperation Treaty (PCT) was created.
Signed into law in 1970, the PCT is a treaty, which unifies the procedure for filing patent applications in each of its contracting states. Therefore, with the PCT an individual can file one international application to cover over a 100 countries since at the moment, there are 152 contracting states under this treaty. While there is an international application, there is no international patent. Therefore, the application goes through two major stages. There is the international stage where it is filed as an international application through one of the contracting states of the PCT. Then there is the national and regional stage where the necessary documents are filed with the patent offices of each of the contracting states in which protection is required.
Benefits of using the PCT
Some would ask if there are benefits to filing an international application if it would still go through the processes of the national stages. Well, yes there are:
– Applying through the PCT provides more time for filing, to any applicant seeking protection for their invention in numerous countries.
For a conventional application, the applicant has only 12 months in which to file the application in all desired countries.
However, under the PCT, he is allowed 30-31 months from the earliest priority date and if no priority is claimed, from the date of filing of the PCT application to WIPO, during which he can decide on which countries to file in.
– There are multiple stages in the registration of a patent, and making an international application through the PCT, assists the applicant in making certain vital decisions on the prosecution of the application at the national phases in the various national and regional Patent Offices.
– The PCT also enables the applicant file one application and claim a priority on his invention simultaneously in 152 states.
The International and National Phase of the PCT
The two main phases of the PCT process are the international phase, where the applicant makes one international application at the beginning, and then the national phase, the end of which results in a number of national and/regional patents in the case of a favorable outcome.
At the international phase, the applicant files the application at the Patent Office of their choice and an international search will be established by one of the International Searching Authorities, after which an international search report and opinion will be written. This is followed by the publication of the international search report and the international application by the International Bureau (WIPO). After this, an additional international search may be carried out by any of the other International Searching Authorities. This search will also result in an additional international search report.
After the application and search report is published by WIPO, each relevant national and/or regional Patent Office where the application was filed for entry to the national/regional phase, can download the necessary data from the WIPO database and proceed with cons. Thus, the application enters into the national phase.
At the national phase, the application will have to abide by the legislation of each state designated in the application as each individual state has different patent laws. In doing so the applicant will have to appoint a representative, also known as a Patent Attorney for each state, pay the required national or regional fees and provide any translations, which may be needed for the application. Each state has a time limit within which these requirements must be met, if not the international application will cease in the particular state in which this time limit is exceeded. To understand this time limit, it is also necessary to understand priority claims.
A priority claim is a declaration in a PCT application, laying claim to the date of an earlier application made in any one of the states of the PCT, Paris Convention, or World Trade Organization (WTO).
In the case of the CIS states, the details of the time limit and further prosecution of the PCT application at the national stages can be seen below:
National/Regional Phases
Russia
Q: What is the deadline for entry of the PCT application into the national phase in the Russian Federation?
A: Thirty-one (31) months from the earliest filing date of the priority application or if priority is not claimed, within thirty-one (31) months from the date of filing of the international application.
Q: What is the name of the institution in charge of intellectual property in Russia?
A: Russian Patent Office (ROSPATENT)
Q: What is the language required for filing the PCT application in Russia?
A: Russian.
Q: Is representation necessary when filing the PCT application in Russia?
A: Yes, the PCT application at the national stage in Russia has to be filed to the Russian Patent Office by a Russian Patent Attorney.
Q: What are the stages of examination of the PCT application in Russia?
A: The formal examination and substantive examination stages.
Q: What is the duration for the Patent registration in Russia?
A: At the national phase in Russia, the Patent registration is usually completed between two (2) to four (4) years.
Q: For how long is a Russian patent valid?
A: The Russian patent is valid for twenty (20) years after the initial filing date. This excludes applications for pesticides, agrochemicals and pharmaceuticals, which can apply for and receive a five-year extension on their patent.
Ukraine
Q: What is the deadline for entry of the PCT application into the national phase in Ukraine?
A: Thirty-one (31) months from the earliest filing date of the priority application or if priority is not claimed, within thirty-one (31) months from the date of filing of the international application.
Q: What is the name of the institution in charge of intellectual property in Ukraine?
A: Ukrainian Patent Office (UKRPATENT)
Q: What is the language required for filing the PCT application in Ukraine?
A: Ukrainian.
Q: Is representation necessary when filing the PCT application in Ukraine?
A: Yes, the PCT application at the national stage in Ukraine has to be filed to the Ukrainian Patent Office by a Ukrainian Patent Attorney.
Q: What are the stages of examination of the PCT application in Ukraine?
A: The formal examination and substantive examination stages.
Q: What is the duration for the Patent registration in Ukraine?
A: At the national phase in Ukraine, the Patent registration is usually completed between two (2) to five (5) years.
Q: For how long is a Ukrainian patent valid?
A: The Ukrainian patent is valid for twenty (20) years after the initial filing date. This excludes applications for pesticides, agrochemicals and pharmaceuticals, which can apply for and receive a five-year extension on their patent.
Kazakhstan
Q: What is the deadline for entry of the PCT application into the national phase in Kazakhstan?
A: Thirty-one (31) months from the earliest filing date of the priority application or if priority is not claimed, within thirty-one (31) months from the date of filing of the international application.
Q: What is the name of the institution in charge of intellectual property in Kazakhstan?
A: Kazakhstan Patent Office (KAZPATENT)
Q: What is the language required for filing the PCT application in Kazakhstan?
A: Russian.
Q: Is representation necessary when filing the PCT application in Kazakhstan?
A: Yes, the PCT application at the national stage in Kazakhstan has to be filed to the Kazakhstan Patent Office by a Kazakhstan Patent Attorney.
Q: What are the stages of examination of the PCT application in Kazakhstan?
A: The formal examination and substantive examination stages.
Q: What is the duration for the Patent registration in Kazakhstan?
A: At the national phase in Kazakhstan, the Patent registration is usually completed between three (3) to five (5) years.
Q: For how long is a Kazakhstan patent valid?
A: The Kazakhstan patent is valid for twenty (20) years after the initial filing date. This excludes applications for agrochemicals and pharmaceuticals, which can apply for and receive a five-year extension on their patent.
Moldova
Q: What is the deadline for entry of the PCT application into the national phase in Moldova?
A: Thirty-one (31) months from the earliest filing date of the priority application or if priority is not claimed, within thirty-one (31) months from the date of filing of the international application.
Q: What is the name of the institution in charge of intellectual property in Moldova?
A: Moldovan Patent Office (AGEPI)
Q: What is the language required for filing the PCT application in Moldova?
A: Romanian.
Q: Is representation necessary when filing the PCT application in Moldova?
A: Yes, the PCT application at the national stage in Moldova has to be filed to the Moldovan Patent Office by a Moldovan Patent Attorney.
Q: What are the stages of examination of the PCT application in Moldova?
A: The formal examination and substantive examination stages.
Q: What is the duration for the Patent registration in Moldova?
A: At the national phase in Moldova, the Patent registration is usually completed between two (2) to four (4) years.
Q: For how long is a Moldovan patent valid?
A: The Moldovan patent is valid for twenty (20) years after the initial filing date. In Moldova it is also possible to obtain a short-term patent, which will be valid for six (6) years, extendable by four (4) years.
Georgia
Q: What is the deadline for entry of the PCT application into the national phase in Georgia?
A: Thirty-one (31) months from the earliest filing date of the priority application or if priority is not claimed, within thirty-one (31) months from the date of filing of the international application.
Q: What is the name of the institution in charge of intellectual property in Georgia?
A: Georgian Patent Office (SAKPATENTI)
Q: What is the language required for filing the PCT application in Georgia?
A: Georgian.
Q: Is representation necessary when filing the PCT application in Georgia?
A: Yes, the PCT application at the national stage in Georgia has to be filed to the Georgian Patent Office by a Georgian Patent Attorney.
Q: What are the stages of examination of the PCT application in Georgia?
A: The formal examination and substantive examination stages.
Q: What is the duration for the Patent registration in Georgia?
A: At the national phase in Georgia, the Patent registration is usually completed between two (2) to three (3) years.
Q: For how long is a Georgian patent valid?
A: The Georgian patent is valid for twenty years after the initial filing date. This excludes applications for pharmaceuticals, which can apply for and receive a five-year extension on their patent.
Armenia
Q: What is the deadline for entry of the PCT application into the national phase in Armenia?
A: Thirty-one (31) months from the earliest filing date of the priority application or if priority is not claimed, within thirty-one (31) months from the date of filing of the international application.
Q: What is the name of the institution in charge of intellectual property in Armenia?
A: Armenian Patent Office (AmPTO)
Q: What is the language required for filing the PCT application in Armenia?
A: Armenian.
Q: Is representation necessary when filing the PCT application in Armenia?
A: Yes, the PCT application at the national stage in Armenia has to be filed to the Armenian Patent Office by an Armenian Patent Attorney.
Q: What are the stages of examination of the PCT application in Armenia?
A: The formal examination and substantive examination stages.
Q: What is the duration for the Patent registration in Armenia?
A: At the national phase in Armenia, the Patent registration is usually completed between one (1) to two (2) years.
Q: For how long is an Armenian patent valid?
A: The Armenian Preliminary Patent is valid for ten (10) years after the initial filing date, and the Patent is valid for twenty (20) years after the initial filing date of the Preliminary Patent.
Belarus
Q: What is the deadline for entry of the PCT application into the national phase in Belarus?
A: Thirty-one (31) months from the earliest filing date of the priority application or if priority is not claimed, within thirty-one (31) months from the date of filing of the international application.
Q: What is the name of the institution in charge of intellectual property in Belarus?
A: Belarus Patent Office (BELGOSPATENT)
Q: What is the language required for filing the PCT application in Belarus?
A: Russian.
Q: Is representation necessary when filing the PCT application in Belarus?
A: Yes, the PCT application at the national stage in Belarus has to be filed to the Belarus Patent Office by a Belarusian Patent Attorney.
Q: What are the stages of examination of the PCT application in Belarus?
A: The formal examination and substantive examination stages.
Q: What is the duration for the Patent registration in Belarus?
A: At the national phase in Belarus, the Patent registration is usually completed between two (2) to five (5) years.
Q: For how long is a Belarus patent valid?
A: The Belarus patent is valid for twenty (20) years after the initial filing date. This excludes applications for agrochemicals and pharmaceuticals, which can apply for and receive a five-year extension on their patent.
Azerbaijan
Q: What is the deadline for entry of the PCT application into the national phase in Azerbaijan?
A: Thirty-one (31) months from the earliest filing date of the priority application or if priority is not claimed, within thirty-one (31) months from the date of filing of the international application.
Q: What is the name of the institution in charge of intellectual property in Azerbaijan?
A: Azerbaijan Patent Office (AZPATENT)
Q: What is the language required for filing the PCT application in Azerbaijan?
A: Azerbaijani; however the claims and abstract also require Russian translations.
Q: Is representation necessary when filing the PCT application in Azerbaijan?
A: Yes, the PCT application at the national stage in Azerbaijan has to be filed to the Azerbaijan Patent Office by an Azerbaijani Patent Attorney.
Q: What are the stages of examination of the PCT application in Azerbaijan?
A: The formal examination and substantive examination stages.
Q: What is the duration for the Patent registration in Azerbaijan?
A: At the national phase in Azerbaijan, the Patent registration is usually completed between two (2) to three (3) years.
Q: For how long is an Azerbaijan patent valid?
A: The Azerbaijan patent is valid for twenty (20) years after the initial filing date. This excludes applications for agrochemicals and pharmaceuticals, which can apply for and receive a five-year extension on their patent.
Kyrgyzstan
Q: What is the deadline for entry of the PCT application into the national phase in Kyrgyzstan?
A: Thirty-one (31) months from the earliest filing date of the priority application or if priority is not claimed, within thirty-one (31) months from the date of filing of the international application.
Q: What is the name of the institution in charge of intellectual property in Kyrgyzstan?
A: Kyrgyzstan Patent Office (KYRGYZPATENT)
Q: What is the language required for filing the PCT application in Kyrgyzstan?
A: Russian; however the claims and abstract also require Kyrgyz translations.
Q: Is representation necessary when filing the PCT application in Kyrgyzstan?
A: Yes, the PCT application at the national stage in Kyrgyzstan has to be filed to the Kyrgyzstan Patent Office by a Kyrgyzstan Patent Attorney.
Q: What are the stages of examination of the PCT application in Kyrgyzstan?
A: The formal examination and substantive examination stages.
Q: What is the duration for the Patent registration in Kyrgyzstan?
A: At the national phase in Kyrgyzstan, the Patent registration is usually completed between two (2) to four (4) years.
Q: For how long is a Kyrgyzstan patent valid?
A: The Kyrgyzstan patent is valid for twenty (20) years after the initial filing date. This excludes applications for pharmaceuticals, which can apply for and receive a five-year extension on their patent.
Turkmenistan
Q: What is the deadline for entry of the PCT application into the national phase in Turkmenistan?
A: Thirty (30) or thirty-one (31) months from the earliest filing date of the priority application or if priority is not claimed, within thirty-one (31) months from the date of filing of the international application.
Q: What is the name of the institution in charge of intellectual property in Turkmenistan?
A: Turkmenistan Patent Office (TURKMENPATENT)
Q: What is the language required for filing the PCT application in Turkmenistan?
A: Russian or Turkmenian.
Q: Is representation necessary when filing the PCT application in Turkmenistan?
A: Yes, the PCT application at the national stage in Turkmenistan has to be filed to the Turkmenistan Patent Office by a Turkmenistan Patent Attorney.
Q: What are the stages of examination of the PCT application in Turkmenistan?
A: The preliminary examination and substantive examination stages.
Q: What is the duration for the Patent registration in Turkmenistan?
A: At the national phase in Turkmenistan, the Patent registration is usually completed between one (1) to six (6) years.
Q: For how long is a Turkmenistan patent valid?
A: The Turkmenistan patent is valid for twenty (20) years after the initial filing date.
Tajikistan
Q: What is the deadline for entry of the PCT application into the national phase in Tajikistan?
A: Thirty (30) or thirty-one (31) months from the earliest filing date of the priority application or if priority is not claimed, within thirty-one (31) months from the date of filing of the international application.
Q: What is the name of the institution in charge of intellectual property in Tajikistan?
A: Tajikistan Patent Office (TAJPATENT)
Q: What is the language required for filing the PCT application in Tajikistan?
A: Tajik or Russian.
Q: Is representation necessary when filing the PCT application in Tajikistan?
A: Yes, the PCT application at the national stage in Tajikistan has to be filed to the Tajikistan Patent Office by a Tajikistan Patent Attorney.
Q: What are the stages of examination of the PCT application in Tajikistan?
A: The formal examination and substantive examination stages.
Q: What is the duration for the Patent registration in Tajikistan?
A: At the national phase in Tajikistan, the Patent registration is usually completed between two (2) to four (4) years.
Q: For how long is a Tajikistan patent valid?
A: The Tajikistan patent is valid for twenty (20) years after the initial filing date
Uzbekistan
Q: What is the deadline for entry of the PCT application into the national phase in Uzbekistan?
A: Thirty-one (31) months from the earliest filing date of the priority application or if priority is not claimed, within thirty-one (31) months from the date of filing of the international application.
Q: What is the name of the institution in charge of intellectual property in Uzbekistan?
A: Uzbekistan Patent Office (UzPTO)
Q: What is the language required for filing the PCT application in Uzbekistan?
A: Russian or Uzbek.
Q: Is representation necessary when filing the PCT application in Uzbekistan?
A: Yes, the PCT application at the national stage in Uzbekistan has to be filed to the Uzbekistan Patent Office by an Uzbekistan Patent Attorney.
Q: What are the stages of examination of the PCT application in Uzbekistan?
A: The formal examination and substantive examination stages.
Q: What is the duration for the Patent registration in Uzbekistan?
A: At the national phase in Uzbekistan, the Patent registration is usually completed between two (2) to five (5) years.
Q: For how long is an Uzbekistan patent valid?
A: The Uzbekistan patent is valid for twenty (20) years after the initial filing date. This excludes applications for agrochemicals and pharmaceuticals, which can apply for and receive a five-year extension on their patent.
All of the above serve as a response to any basic questions you might have on PCT and Invention Applications in the CIS, for the successful registration of your patent in this region. For answers to any further questions not addressed by this article, you may visit the PCT country guide: link or email us at info@iprgroup.info.
For an estimation and detailed breakdown of PCT entry fees, please use PAT-ROLL.
