There are two pathways to acquiring an overseas patent. When considering whether to apply, it is important to remember that there is no such thing as an “international patent”, and patent protection must be sought in each individual country (or, where applicable, region) in which patent protection is required.
Typically, for Australian applicants, a first patent application will be filed at IP Australia. Foreign patent applications will usually be based on this first application, and must be filed within 12 months of filing the first application (known as the “Convention period”).
Firstly, you can apply through the Paris Convention, whereby individual applications must be sent to each country where you wish to have your invention protected (“designated countries”). The Paris Convention also lays down procedures that are applicable to all international patent applications.
Alternatively, you may apply through the Patent Cooperation Treaty (PCT). The PCT allows you to file a single international application that is processed through the World Intellectual Property Organisation (WIPO). A PCT application is effectively a large number of national applications rolled into one.
What are the key benefits of a PCT application?
The Paris Convention requires you to file an overseas patent application in each country in which patent protection is required, within 12 months of filing the first application (usually an Australian domestic application for Australian applicants) for your ‘priority date’ to be recognised. A priority date is very important because, where there is competition between sufficiently similar patent applications, a patent will be awarded to the applicant with the earliest priority date. The Paris Convention allows you to use your Australian domestic application date as the priority date for your overseas applications.
A PCT application must also be filed within 12 months of a first application. When you apply for overseas patent protection through the PCT, the decision regarding the individual countries to file in (and the costs associated with this) is delayed for another 18 months over and above the 12 months Convention period. This can be highly beneficial if your invention is still in its early stages, or you require further time to develop the markets for your invention.
A PCT application is usually cost effective where you wish to have your patent protected in 4 or more countries. Furthermore, the International Searching Authority will produce a written opinion that assesses the patentability of your invention – all before your application is scrutinised by your designated country’s IP Offices.
What are the steps of a PCT application?
There are two distinct phases of a PCT application, the international phase and the national phase.
1. Pre-PCT Application – Domestic Application
Your Australian domestic application establishes the priority date, which is crucial for protecting your patent both overseas and in Australia. An Australian domestic application can be filed with IP Australia.
2. International Phase – PCT Application
A PCT application can be filed in the first instance. More typically, however, it is filed through an ‘international receiving office’ within 12 months of your domestic application. IP Australia is an international receiving office and PCT applications can be processed by Australian patent examiners. The application automatically designates all countries that are signatories to the PCT (currently 152) keeping your rights pending in all of those countries for the life of the PCT application.
3. International Phase – International Examination
Your application is then subject to an International Search carried out by the International Search Authority to determine whether your invention is similar to any other inventions that have been filed via a patent application before your priority date. The findings of this search are reported in an International Search Report and Written Opinion. While not compulsory, you may amend your application in light of these reports. This may help to streamline processing of any future individual national applications.
4. International Phase – International Publication
Within 18 months of the priority date, your application is published by the International Bureau. It can then be viewed internationally.
5. National Phase – National Applications
Your application then proceeds to the national phase. Within 30 months of the priority date (in most countries), you must “nationalise” your PCT application in any countries in which patent protection is required. Rights to the invention are lost in any country in which the national phase is not entered.
National phase patent applications are then processed according to the national laws of each country in which they are filed.
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