PCT Newsletter

Titles of protection other than a patent can be sought through the PCT where a territory’s national or regional law provides for alternative types of protection for inventions. One common alternative to a patent is the utility model and there are other forms of protection similar to utility models, such as a certificate/patent of addition or an inventor’s certificate.

Applicable national or regional procedures for obtaining and maintaining a utility model are usually simpler, cheaper and faster, with less or no substantive examination required. Certain requirements, such as inventive step, may be less stringent or absent. However, utility models offer a shorter term of protection than patents. Because there is less or no substantive examination, a utility model is typically not as “strong” as a patent and provides less legal certainty with regard to validity.

The detailed features of each alternative form of protection for inventions will depend on the particular national system. In some countries, a utility model can be obtained only for product inventions and only in limited fields of technology, while technical, chemical and biological processes may not be eligible for such protection.  

Importantly, while the PCT System enables you to seek alternative forms of protection for inventions, it does not cover other intellectual property rights such as trademarks and industrial designs. WIPO offers other systems of international protection for such IP rights, for example the Madrid System for trademarks and the Hague System for industrial designs.

When you file an international application through the PCT, the filing of the PCT request constitutes the automatic and all-inclusive coverage of all designations available under the PCT on the international filing date, for every kind of protection available for each country concerned (PCT Articles 2(ii), 43 and 44, and Rule 4.9(a)), and, where applicable, in respect of both regional and national patents (PCT Article 45 and Rule 4.9(a)(ii)).

During the international phase of the PCT procedure, you do not need to make any indication relating to the title of protection and there is no such possibility in the request form or ePCT. You may keep your options open until you enter the national phase; it is only before each designated Office that you select the specific type of protection. Fees in the international phase are the same whichever type of protection you eventually plan to seek.

However, if you wish a PCT 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 continuation-in-part of an earlier application (PCT Rule 4.11(a)(ii)), certain indications may be required at the time of filing.

Information on the available titles of protection by Office can be found in the table Types of Protection Available via the PCT in PCT Contracting States and in the National Chapters of the PCT Applicant’s Guide. Further information on laws relating to alternative forms of protection in different countries can be found in the WIPO Lex database, and some basic information and frequently asked questions (FAQs) on utility models are available on WIPO’s webpage on utility models.

A few countries allow you to choose more than one type of protection and in such cases you may be required to indicate to the designated Office which type of protection is sought primarily (PCT Rule 49bis.1(b)). In some jurisdictions, utility model and patent protection may be complementary rather than alternatives, potentially enabling you to obtain a utility model while waiting for the grant of a patent. Furthermore, some countries provide for the possibility of converting from one type of protection to another (PCT Rule 49bis.2(b)).

Some countries which are members of regional patent organizations provide for a type of protection other than a patent but have “closed the national route”. This means that the State may be designated only for a regional patent and such other types of protection cannot be obtained via the PCT for the country concerned. For example, France has closed the national route with the result that a certificat d’invention can only be requested through a direct national application in France. The above-mentioned table and the PCT Applicant’s Guide do not include any types of protection that cannot be obtained via the PCT.

Where the local patent system provides for a choice of kinds of protection, you need to carefully examine and compare their specific features to determine which would be more suitable for your invention, and in which market. For example, if you have made an improvement to an existing product which may not be considered to be sufficiently inventive to be patentable, or the product concerned is expected to have a short life cycle, a utility model or similar kind of protection may be an interesting alternative, if such protection is available in your target markets.