An Australian patent will only provide you with protection in Australia. If you are looking to expand your business overseas, then you should also consider protecting your product with a patent in your target markets. You should consider protecting your patent in countries where you plan to:

  • sell or export your product or service;
  • manufacture or develop your product or service; or
  • license your product or service.

For example, you might run a business based in Australia. If you are planning to license your patent to a company in Germany to manufacture and sell in Europe, you may consider filing a direct application to the European Patent Office. This is the regional patent office that governs all member countries of the EU. 

This article will outline the process for applying for a patent overseas. In particular, it will consider the key issues to consider when applying for an international patent through the Patent Cooperation Treaty (PCT).

Direct or ‘Paris Convention’ Application

One option for protecting your patent overseas is to file a separate patent application in each country. This is often called a direct application. This can be a cost-effective option if you only need to protect your patent in a few countries. It may also be a good idea if the country that you are seeking protection in is not a member of the PCT (e.g. some African and Middle Eastern countries). 

Under the Paris Convention, you can claim the date on which you filed your first patent application as the ‘priority date’ for your application in other countries. This only applies, however, if you file the direct application within 12 months of filing your first patent application. The priority date of your patent application is the date from which pre-existing art or designs are excluded during examination of your application. This means that it is crucial to establishing the novelty of your invention. 

For example, you might have filed a provisional patent application in Australia on 26 August 2019. You could then decide to file a patent application in the United States on 10 June 2020. Because you filed the US application within 12 months of your first patent application, the priority date of your patent application in the US will be backdated to 26 August 2019 (i.e. the filing  date of your earliest patent application). 

It is important to be aware that the law governing patents is different in each country. This means that being granted a patent in Australia does not mean that you will be granted a patent in another country, as the requirements may be different. The processes and costs relating to filing a direct patent application also vary from country to country. 

For example, the approval process in the US takes up to 2 years. In the EU, however, it can take 3-5 years.

PCT Application

A PCT application is often mistakenly called a ‘worldwide’ patent application. However, there is no such thing as an international patent. The PCT simply allows you to file a single patent application that serves as a placeholder for later filing patent applications in more than 150 contracting states. Although the placeholder does not provide patent protection, it can accelerate your application once you lodge in each country. A patent filing strategy that relies on a PCT application has two main stages, namely, the:

  1. international phase; and
  2. national phase.

The international phase can be broken down into the following key steps.

1. Filing

First, you must file a PCT application with The World Intellectual Property Organization (WIPO). WIPO  assigns the application a filing number and ensures that it complies with the PCT formality requirements. If you file within 12 months of your first patent application, you will be able to claim your priority date for your PCT application.

2. International Search

Next, an ‘International Search Authority’ (ISA) searches for any relevant documents describing similar inventions to the one claimed in your PCT application. The findings of the search are issued in a report called the ‘International Search Report’ (ISR). You will also receive a written opinion on your invention’s patentability called an ‘International Search Opinion’ (ISO).

3. International Publication

After 18 months has passed from your earliest priority date, the International Bureau publishes the content of your PCT application.

4. International Preliminary Examination (optional)

Finally, you can request an International Preliminary Examination (IPE) within 22 months of your priority date. The IPE is based on your  ISO and any amendments you file in response. This step can help refine your application before you proceed to the national phase.

After the international phase, you can proceed to the national phase. This is where you can request your PCT application to proceed as a separate, standard patent application in the individual countries that you have selected. This means that the national patent office will examine your patent application and determine whether to grant or refuse a patent, according to national patent laws. 

It is important to be aware that there are time limitations on filing national entries. Each country will have a different time limit. However, you will typically have around 30 months from your priority date to file an application in a specific country. The time limits for each country can be found here.

The PCT route is a popular way to seek patent protection in multiple countries because:

  • you pay a single filing fee and do not initially need to provide a translation of your application;
  • after filing a PCT application, you will receive an ISR and ISO, which will indicate the strength of your application;
  • you will have the opportunity to amend your claims based on the results of your ISR and ISO;
  • you will have the option to request an IPE, which will further assess your potential patent;
  • a single application applies in over 150 contracting states;
  • you will have extra time to assess the value of your invention, decide which countries to apply in, and defer the costs.

Key Takeaways

It is important to be aware that there is no such thing as an international patent. If you are seeking to protect your patent overseas, you can either:

  1. file a separate patent application in each country you are seeking protection in; or
  2. file a single patent application under the PCT, followed by national phase entries.

In either case, you will end up with separate patent applications that will be assessed by the patent office in each country. The PCT route is a popular method as it generally delays the time and costs when deciding in which countries you want to pursue patent protection. However, there are benefits to both methods. If you need assistance with applying for a patent overseas, contact LegalVision’s patent lawyers on 1300 544 755 or fill out the form on this page.

About LegalVision: LegalVision is a tech-driven, full-service commercial law firm that uses technology to deliver a faster, better quality and more cost-effective client experience.
Graci Chen

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