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Note from 25 August 2021, the innovation patent will cease to exist. After this date, you can only file a divisional innovation patent if it is based on a previously filed patent. Read more about this change in our article.

A patent is a set of exclusive rights granted over any device, substance, method or process that is new, inventive and useful (an Invention), for a limited time after a successful application process. Similar to trade marks, it is a registrable right granted by the country of registration. An applicant for a patent has to disclose the substance of the invention, making the information available to the public. Consequently, some inventors make the business decision not to disclose their patents, instead opting to keep their invention confidential as a trade secret.

Over the coming weeks, we will explore the topic of patents and its application process in Australia. Last week, we examined the application process for innovation patents. This week, we will look at the application process for the Patent Cooperation Treaty (“PCT”). For an introduction on PCT, see our article on types of patents. Note: by going through the PCT process, you must still apply to the individual countries to which you are seeking patent protection.

The Application Process under PCT

The key steps in the application process are:

  • Conduct a search: This establishes whether any Prior Art Base exists in the marketplace, which can affect the novelty or inventiveness of you application. See our article on conducting a search for more information.
  • Application: You can apply for a patent under PCT through IP Australia. When you submit your application, IP Australia will check the application to ensure there are no mistakes to the formal requirements of the document. This process usually takes one to two weeks.
  • Request an International Type Search: An international type search can be conducted by one of the 18 functioning international searching authorities (“ISAs”). The search will identify the prior art relevant to the patentability of the invention, establish an International Search Report (“ISR”), and provide a written opinion on the Invention’s potential patentability. You will also receive an examination report called a Written Opinion of the International Searching Authority (also known as an International Search Opinion (“ISO”)) within three months. As a PCT requirement, you will be issued the ISR and ISO within three months of the application’s lodgement date, or nine months of the earliest Priority Date, whichever is later.
  • Publication of your application: The international bureau publishes your application and the international search report 18 months from the earliest Priority Date. If you wish to avoid or postpone publication, you must provide the international bureau a notice of withdrawal of international application, or of the priority claim. The international bureau must receive this no later than 15 working days before the application is due to be published.
  • Request international preliminary examination (optional): You can file a request to examine your patent application within 22 months of the earliest Priority Date. This may help you refine your application before you proceed with the national phase.
  • International Preliminary Report on Patentability (IPRP) issued: Within 28 months after the earliest Priority Date, the examiner will establish an IPRP report. Similar to a standard patent application, this may be an adverse report if there are deficiencies in your patent application.
  • Apply to patent in selected countries: After the IPRP is issued, you can request for your international application to proceed as a standard patent application in the countries you have selected (i.e. the countries you would like to seek patent protection). Although you usually have 30 months from the Priority Date to apply for a standard patent in many jurisdictions, you should check the timing requirements for individual countries as some have shorter time periods (e.g. 20 months from the Priority Date) to others (Australia allows 31 months).

Conclusion

There are different avenues and methods to protecting your invention, and securing a patent is one of them. Unfortunately, securing a patent is not a simple or straightforward process. This process can be more complex and lengthy if you are looking to secure your patent in multiple jurisdictions. Our team of IP lawyers and patent attorneys have extensive experience in this area and would be happy to assist with protecting your invention. To speak with a member of our team today, contact LegalVision on 1300 544 755.

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