International Patent Filing Services
How do I register my patent internationally?
To obtain patent protection for an invention overseas you can:
- file a patent application directly in each country where you wish to have patent protection; or
- file an International (PCT) Application.
1. Filing directly into overseas countries
There is an international convention called the Paris Convention, which provides a period of 12 months from the filing date of a first application (basic application) to file overseas patent applications in each country where patent protection is sought. The foreign application will then be given the same priority date as that of the basic application (i.e. Australian application) and not the actual filing date in the foreign country.
This option is most useful to obtain patent protection:
This option is most useful to obtain patent protection:
- as soon as possible in foreign countries; and/or
- in a small number of foreign countries.
2. Filing an International PCT Application
The Patent Co-operation Treaty (PCT) is an international arrangement which enables you to file a single international application that has the same effect as a separate filing in each of the PCT member countries you choose to designate for patent protection. The international application is filed through the receiving office of the member country (eg. IP Australia), and establishes a filing date which is effective in each of the member countries. The application consists of a complete specification, the same as that of a complete application.
The international application may also claim priority from an earlier filed application (i.e. provisional application) if filed within 12 months from the filing date of the earlier application.
Once the international application is filed, an international patentability search is carried out by IP Australia for the invention and an international search report is provided, which can be very useful to determine the chances of success for obtaining a valid patent in various member countries.
If relevant prior art is found, the international application can be amended within two months of the international search report or during option international preliminary examination. The international examination procedure does not remove the requirement for examination of the national phase applications before the respective national Patent Offices. However, dealing with any patentability issues at an early stage can streamline the national examination process and reduce any associated costs.
The international application also provides a further 18 month period in which to manufacture and market an invention, and determine whether it is commercially viable.
After this 18 month period, the international application must be converted into one or more national or regional applications in each of the member countries where protection is sought. This is known as national phase and occurs 30 months (in most countries) from the earliest priority date, which is usually the filing date of an associated provisional application.
Once the application has entered national phase, the process is the same as that of a standard application, as you are effectively applying for a standard patent in each of the respective countries.
This option is most useful to:
Adept IP can assist you to develop and implement a foreign patent filing and protection strategy that best suits your commercial needs and budget.
Please contact us for more information.
The international application may also claim priority from an earlier filed application (i.e. provisional application) if filed within 12 months from the filing date of the earlier application.
Once the international application is filed, an international patentability search is carried out by IP Australia for the invention and an international search report is provided, which can be very useful to determine the chances of success for obtaining a valid patent in various member countries.
If relevant prior art is found, the international application can be amended within two months of the international search report or during option international preliminary examination. The international examination procedure does not remove the requirement for examination of the national phase applications before the respective national Patent Offices. However, dealing with any patentability issues at an early stage can streamline the national examination process and reduce any associated costs.
The international application also provides a further 18 month period in which to manufacture and market an invention, and determine whether it is commercially viable.
After this 18 month period, the international application must be converted into one or more national or regional applications in each of the member countries where protection is sought. This is known as national phase and occurs 30 months (in most countries) from the earliest priority date, which is usually the filing date of an associated provisional application.
Once the application has entered national phase, the process is the same as that of a standard application, as you are effectively applying for a standard patent in each of the respective countries.
This option is most useful to:
- obtain patent protection in a large number of foreign countries;
- provide additional time if you are uncertain of your foreign patent strategy;
- you are still uncertain of the commercial viability of your invention and intended markets; and/or
- delay foreign filing costs for as long as possible.
Adept IP can assist you to develop and implement a foreign patent filing and protection strategy that best suits your commercial needs and budget.
Please contact us for more information.
