WARNING: Although the information which follows was correct at the time of publication, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

Requesting that the international application be treated as an application for a type of protection other than a patent in a particular country

Q: If I wish to request a type of protection other than a patent in a particular PCT Contracting State, should I specify this in the international application at the time of filing?

A: First of all, it is recalled that protection other than a patent can only requested if the designated Office grants such types of protection. The type(s) of protection available in each PCT Contracting State is indicated in the corresponding part of Annex B of the PCT Applicant's Guide and in the table "Types of Protection Available via the PCT in PCT Contracting States" at:

/pct/en/texts/typesprotection.html

Examples of such kinds of protection other than a patent are: a utility model, a utility certificate, a petty patent or an inventor's certificate.1

You are generally not required to make, at the time of filing, any indications in the request form (PCT/RO/101) or in ePCT as to the specific type of protection that you are seeking in a particular country. This is because the filing of the request portion of the international application constitutes, under PCT Rule 4.9(a), the automatic and all-inclusive coverage of all designations available under the PCT on the international filing date, in respect of every kind of protection available for each country concerned and, where applicable, in respect of both regional and national patents.2 Therefore, there is no requirement or facility for requesting a particular type of protection during the international phase. Note, however, that if you wish an application to be treated as a patent of addition, certificate of addition, inventor's certificate of addition or utility certificate of addition (PCT Rule 4.11(a)(i)), or a continuation or a continuation-in-part of an earlier application (PCT Rule 4.11(a)(ii)), certain indications may be required in the request form.

If you wish your international application to be treated, in a particular designated or elected State in respect of which PCT Article 43 applies3, as an application not for a patent but for another kind of protection available under the national law of the designated or elected State concerned (or where possible, in addition to a patent), you should indicate that choice of protection directly to the designated or elected Office concerned when performing the acts referred to in PCT Articles 22 or 39(1) for entry into the national (or regional) phase. However, the time when you should do this may vary, depending on the applicable national law - some designated (or elected) Offices allow you to indicate your choice(s) of protection at a later time (PCT Rule 49bis.2(b)). Note that, where more than one type of protection is sought, you may also be required to indicate which type of protection is sought primarily (see PCT Rule 49bis.1(b)). If you do not make any express indication that you wish to apply for a type of protection other than a patent when performing the acts referred to in PCT Article 22, the designated Office will treat the application as an application for a patent.

Note that where there is more than one applicant named in the international application, and where more than one type of protection is available in a PCT Contracting State, different applicants may not be indicated for different types of protection. The same applies where a State can be designated for both a national and a regional patent.

Even if you request one particular type of protection, a number of Offices will allow you to convert from one type of protection to another at a later date (PCT Rule 49bis.2(b)) (for instance, from a utility model application (or utility model) to a patent application (or patent), or vice versa). This may, however, be subject to the payment of a special fee. Although conversions are normally made by applicants, some Offices may convert an application ex officio where appropriate.

For further information on any specific requirements of designated Offices in connection with requesting different types of protection, and on converting from one type of protection to another, please refer to the corresponding National Chapter of the PCT Applicant's Guide at:

/pct/en/appguide/

  1. Please note that some countries which under their national law provide for a type of protection other than a patent may have "closed the national route". This means that the State may be designated only for the purposes of a regional patent, with the result that such other type of protection cannot be obtained via the PCT for the country concerned. Any such other type of protection, for example a "certificat d'invention" in France, could only be requested in a direct national application. The PCT Applicant's Guide and PCT table containing types of protection, referred to above, do not include any types of protection which cannot be obtained via the PCT .
  2. You should be aware that there is an exception to the all-inclusive designation if you need to exclude (irrevocably) the designations of certain States (specifically: DE Germany, JP Japan or KR Republic of Korea) for any kind of national patent. Such exclusion of designations is highly recommended if, at the time of filing or if a priority claim is added subsequently under PCT Rule 26bis.1, PCT Rule 4.9(b) applies to any of those countries and the international application claims priority of an earlier national application filed in the State concerned. Withdrawing the designation of that State avoids the situation where the earlier national application, the priority of which is claimed, would cease to have effect.
  3. PCT Article 43 provides for the indication by the applicant that the international application is for the grant of a particular kind of protection, in any State whose law provides for such protection.