We have, for some time, been aware of an amendment which was alleged to have been made to the calculation of the term of protection and payment of annuities in respect of PCT national phase patent applications in Egypt. We have been monitoring this matter closely, because we had received advice from our Egyptian associate that no official notification to this effect had been issued by the relevant minister of the Egyptian government, and that any advice which we had received to the contrary from other agents in Egypt was therefore incorrect.

On 6 June 2009, an Administrative Circular No. 1/2009 was finally issued by the Egyptian Patent Office regarding the above amendments. However, once again, we were advised by our associates in Egypt that this notification was not effective and that the Patent Office was refusing to recognise or apply the contents of the circular, because changes of this sort can only be made by a ministerial decree. Our associates met with the Director of the Egyptian Patent Office to discuss this matter, and finally, on 15 June 2009, an amended Administrative Circular was issued which has been accepted by the Egyptian Patent Office.

The circular (which retains its date of 6 June 2009) states that both the term of a PCT-derived patent and the deadline for paying annuities thereon will now be calculated from theinternational filing date instead of the local filing date, and that back renewal fees are therefore now payable retroactively in respect of both pending patent applications and granted patents within 6 months of the issuance of the decision, i.e. before 6 December 2009. Examples showing how the new calculations are to be made are set out below for your convenience.

For new PCT national phase applications filed from now on in Egypt, the annuities that fell due on the first anniversary of the international filing date will normally be payable upon entry into the PCT national phase in Egypt. If priority is not claimed in the PCT application, the annuities which were due on the first anniversary and the second anniversary of the international filing date will normally be payable.

e.g. 1. International filing date = 3 January 2008; 
Earliest priority date = 5 January 2007; 
National phase deadline = 30 months from 5 January 2007 = 5 July 2009;
Annuity payable upon entry into national phase = that which fell due on 3 January 2009 (second annuity). Third annuity due on 3 January 2010.

2. International filing date = 3 January 2007; 
No priority claimed; 
National phase deadline = 30 months from 3 January 2007 = 3 July 2009; 
Annuities payable upon entry into national phase = those which fell due on 3 January 2008 (second annuity) and 3 January 2009 (third annuity). Fourth annuity due on 3 January 2010.

For already-pending applications and granted patents with filing dates prior to 6 June 2009, the annuities which fell due on the first and each subsequent anniversary of the international filing date that have already passed will be payable as an accumulated retroactive annuity before 6 December 2009. However, any annuities which have already been paid under the old system (i.e. calculated from the local filing date) are taken into account and cancel out the equivalent renewals due under the new system, as shown in the below example:

3. International filing date = 14 February 2005; 
Local filing date = 10 August 2006; 
Under new system, annuities payable = those which were due on 14 February 2006 (second annuity), 14 February 2007 (third annuity), 14 February 2008 (fourth annuity) and 14 February 2009 (fifth annuity). 
However, under old system, annuities already paid = those which were due on 10 August 2007 (second annuity) and 10 August 2008 (third annuity).
Therefore, annuities payable before 6 December 2009 (end of grace period set by Administrative Circular No. 1/2009) = fourth and fifth only (because second and third already paid under old system).
Sixth annuity then due 14 February 2010.

As far as already-issued Letters Patents are concerned, we understand that the Patent Office will issue an official letter stating that the term of all national phase patents deriving from PCT applications with international filing dates on or after 6 September 2003 (the date on which Egypt joined the PCT) will be 20 years from the international filing date. Thus, there will be no need to have each Letters Patent corrected to reflect the new term.

Should you have any queries in this regard, please do not hesitate to contact us.