Dealing with requests for extension under the Patent Cooperation Treaty

National phase of international patent applications
Request for extension of time
Approach

National phase of international patent applications

The Patent Cooperation Treaty provides that an international application which meets the requirements for such an application and is accorded an international filing date shall have the effect of a regular national application in each designated state, as of the international filing date.

An international application which designates Kenya may, on request, be treated as an application under the Kenyan Industrial Property Act 2001, so that a Kenyan patent is granted. In this regard, the Kenya Industrial Property Institute (KIPI) is the designated office. In its functions the KIPI is guided by the treaty and the act.

An international application will be treated as an application under the act if it is filed with the KIPI within 30 months of the priority date (usually the international filing date). For the purposes of entry into the national phase, the application is made by way of a prescribed form, although this is not mandatory.

Request for extension of time

The treaty provides that the designated office may extend the 30-month time limit at the applicant's request, whereafter the rights of the applicant with respect to the international application may be reinstated. The time period may be extended if:

• the delay in submitting the application was unintentional; or
• the failure to meet the deadline occurred in spite of due care.

Approach

Neither the treaty and its regulations nor the act and its regulations state the form in which a request for an extension of time should take. The regulations under the treaty refer only to "a request", and a declaration may also be made. Therefore, the question arises: how should such a request be made?

In recent dealings with the KIPI regarding such extensions, the KIPI has asked that the following documents be submitted alongside the extension request:

• a letter of explanation of the cause of the delay by the applicant's patent attorney;
• a letter of explanation of the cause of the delay by the applicant/inventor;
• a sworn affidavit by the applicant/inventor stating the cause of the delay; and
• any other documents that show the cause of the delay or that the failure to meet the deadline occurred in spite of due care.

Such documents should make a case for the applicant in requesting the extension of time. No fees are payable for the request. It will usually be forwarded to the KIPI's legal department and the managing director for directions and advice, and a decision will be made.

It is hoped that the KIPI will issue guidelines on how to make such requests and how to appeal against decisions on such requests, particularly in cases where the applicant's reasons for an extension of time are justifiable.

For further information on this topic please contact Anthony Gakuru at Njoroge Regeru & Company by telephone (+254 20 271 8482), fax (+254 20 271 8485) or email ([email protected]).