An Australian patent is a written document that discloses your invention and, if granted, provides you with the exclusive right to exploit your invention in Australia. Depending on your type of invention or business model, it might be beneficial to seek patent protection in overseas jurisdictions.
There are two ways to file for a patent overseas, those being:
1. Convention Applications; and
2. Patent Cooperation Treaty (PCT) Applications.
Each approach has a different process that can be utilised to suit your individual patent needs. In practice, you would consider applying for a patent in those countries where you anticipate:
(a) selling the products or services protected by the patent;
(b) exporting the products or services protected by the patent; or
(c) licensing the products or services protected by the patent.
Convention Applications involve filing for a patent individually in each country you wish to establish patent rights.
While the patent process in most countries is generally the same as in Australia, each country has different requirements that you need to be aware of. Chamberlains can assist with overseas Convention Applications by obtaining quotes for an overseas patent agent (Overseas Associate) and preparing the necessary documents to engage the Overseas Associate.
Where patents are required in many jurisdictions, the Conventions Application method can quickly become complex and expensive, given the varying patent requirements of each country. When you are considering applying for three or more countries, we would recommend considering a PCT Application to simplify the process and minimise costs.
The PCT is an international agreement administered by the World Intellectual Property Organisation (WIPO). A PCT Application involves lodging an application with the WIPO, allowing you to nominate and file for a patent in any of the 153 countries which are signatories to the treaties. A complete list of the countries available can be found here: https://www.wipo.int/export/sites/www/pct/en/list_states.pdf
The PCT process consists of two phases:
1. International Phase
- Priority Application is filed with the patent office. This application will establish a priority date which gives preference over other applications filed after this date.
- PCT Application lodged with IP Australia as the Receiving Office (RO) within 12 months of the Priority Application. The RO will check the application for any mistakes. This usually takes 1-2 weeks.
- The International Searching Authority (ISA) will conduct a search for any documents describing similar inventions to the one in your application. The ISA will then generate a report (ISR) and a written opinion (ISO) on your invention. This should be completed within 3 months of your application being lodged.
- You can amend your application based on the findings of the ISA. Amendments must be made within two months of the ISR being issued.
- 18 months from the earliest priority date, WIPO publishes the application and the ISR.
2. National Phase
- At 30 months from the earliest priority date, you apply to enter the national phase in your selected PCT signatory countries.
- Your national phase application is treated a patent application in that country and undergoes the patent process as mediated by that country’s laws.
How Do I Start Applying for a Patent Overseas?
When applying for patents internationally, it is important to consider what approach will best serve your business and intellectual property needs. This can help ensure patents are registered in the simplest, quickest, and most cost-effective manner.
Speak to one of our friendly staff members at Chamberlains if you are interested in filing an international patent application. Our Patent Attorneys are able to determine the right method of application for you, obtained quotes for Overseas Associates, and draft and file the application on your behalf.