|
International and foreign patents
|
Many inventions have market potential overseas.
If you want to market or manufacture your invention in other countries you should consider obtaining overseas patent protection.
There is no such thing as a global patent. In order to protect your invention in other countries you will need to apply for patents in each country (or region) in which protection is required.
You can do this by filing a separate patent application in each country of interest. Assuming you file your applications within the requisite time limits, your Australian application priority date will be applicable for all countries that are signatories to the Paris Convention (and a few others that have mutual recognition with Australia). See below for an explanation of the Paris Convention.
This approach may be cost effective where protection is required in only a few countries.
Where protection is sought in a greater number of countries, it is usually more costeffective to file a single international patent (PCT) application. See below for more detail on the PCT process.
You may choose to file both an international application and some direct national applications.
The filing of patent applications in other countries is an expensive process and careful thought needs to be given to country selection before proceeding.
|
Paris Convention
|
Under the Paris Convention, each member country is required to grant nationals of other member countries the same rights that would be granted to its own nationals. This includes recognising the priority date of an application fied in the applicant’s home country, provided that the overseas “convention” patent applications are filed within 12 months of filing the home country application.
For example, Australian applicants have 12 months within which to file a Convention patent application in any of the Convention countries and claim the Australian filing date. Therefore if you filed a provisional patent application in Australia on 1 June 2006 you would have until 1 June 2007 to file Convention applications in other member countries. All such applications would be
entitled to claim the Australian filing date, which is the date of filing of the original provisional application in Australia.
As at June 2007, there were 178 members of the Paris Convention – Australia has been a member since 1925.
Some non-Paris Convention countries provide similar recognition to Australian originating applications. These countries are: Angola, Brunei Darussalam, Fiji, Kuwait, Maldives, Myanmar, Solomon Islands, Taiwan and Thailand.
If you wish to protect your invention in a country that does not recognise Australian priority, separate applications have to be filed in these countries before any disclosure of your invention.
|
Patent Cooperation Treaty
|
The Patent Co-operation Treaty (PCT) is an international arrangement that streamlines the filing and processing of patent applications in multiple countries. It provides a unified system through which you can apply for patent protection in the member countries. It does not achieve grant in any country - it is simply an
application process.
The PCT facilitates the filing of a single international application through the receiving office of a member country, which has the effect of a national filing in each of the member countries designated by the applicant. There are currently 137 member countries, including Australia.
Shortly after an international application is filed at the Australian Patent Office, an international patentability search is carried out by the Patent Office on the invention. An international search report is issued. These reports can be very useful when determining the likelihood of getting a patent granted for the invention in various countries.
Eventually, the international application must be converted into separate applications for each country, or region, in which patent protection is required. This procedure is known as National Phase Entry and must be commenced within 30 months of the earliest priority date (normally the provisional application filing date) in most countries. A smaller number of countries allows
31 months.
Advantages of international applications include:
|
- It is easier and more cost effective to prepare a single international application than multiple national applications at what is usually an early
- stage in the commercial development of the invention.
- An international search is conducted to determine whether the invention is new and includes an inventive step, and the report on the search can assist the applicant in making an informed decision as to whether to incur the costs of National Phase Entry.
- National phase entry (and the substantial costs associated with that) can be delayed for a period of up to 30/31 months from the priority date during which time financial backing for the invention may be gained from an investor, or the invention may be sold or licensed to another party.
|
|
Some European countries do not permit direct national phase entry from a PCT. They require entry via a European patent application. These countries include: Belgium, Cyprus, France, Greece, Ireland, Italy, Latvia, Malta, Monaco, Netherlands
and Slovenia.
|
Regional patents
|
In some parts of the world it is possible to file regional patent applications covering a group of countries.
For example, a European patent application can cover the countries that are members of the European Patent Convention. Although it is possible to obtain a single patent covering all of
those countries, it is still necessary to validate the patent (once granted) in each European country of interest.
Regional patents covering some African countries, some former Soviet states and some Middle-Eastern countries are also available.
|
