Provisional Patent Application
The filing of a provisional patent application with IP Australia is usually the first action taken, as it is provides you with a priority date and 12 months’ protection from that date to further develop your invention or refine your patent specification. This period may also be utilised to consider the commercial prospects of your invention and whether it is worthwhile to pursue patent protection beyond this stage. Provisional patent applications can now also be filed online.
Your provisional patent application should consist of a patent specification as well as forms in relation to your application. The patent specification itself must provide a description of your invention and its characteristics, in addition to, ideally, claims which define the rights you are seeking. As such, it is important that you draft your specification broadly so that its full scope can be implemented in the future without fear of circumvention by copiers. A registered patent attorney is uniquely qualified to draft a specification in this manner, formulating the most relevant and broad claims for your idea.
Furthermore, a patent search is often performed to identify possible relevant prior art. The patent information obtained from this search will help you to determine whether your application will be successful, and to gauge your options for prosecution in later stages of the application process.
Complete Patent Application
The next step involves the filing of a complete patent application, which needs to be done before the end of the 12 month deadline. Failure to do so will result in a loss of priority. The complete application may take the form of a complete national application with the relevant patent office or a Patent Cooperation Treaty (PCT) international application may be filed with the World Intellectual Property Organisation (WIPO).
International Patent Application
Where multiple countries are sought for patent protection, the PCT application is an ideal option, as it establishes a filing date in the 140 or so countries which are party to the PCT. This provides you with the opportunity to obtain patent protection in any of those countries that you wish. Carrying this out subsequently involves filing what is called a “national phase application” in each such country, to be done within approximately 30 - 31 months of the priority date.
Another option is to file a complete direct application in each country of your choosing without going through the PCT application process. This is particularly relevant if you are only seeking protection in a few countries.
Your PCT application lasts up to 30 - 31 months from the priority date before lapsing, depending on the country. To protect your invention in each country of interest, complete national phase applications have to be filed in each individual country by this time. Filing a PCT application also allows you to delay the deadline for (and thus mitigate the costs of) filing individual complete applications in each elected country for up to 18 months after the expiry of the Australian provisional patent application.
National Phase Application
For a foreign applicant seeking to file a patent in Australia, the patent process contains certain minimum filing requirements for a PCT national phase patent application:
- Particulars of the PCT application including WIPO publication number; and
- If the PCT international patent application is in a language other than English, an English copy of the application, certified by its translator as a true and complete translation.
IP Australia may also request the following additional documents during the patent process:
- Verified English translation of the basic application;
- Notice of Entitlement (this can be prepared and signed by an Australian patent attorney).
- Appointment of Agent;
- Details of any amendments made during international phase; and/or
- A copy of the International Preliminary Examination Report if applicable.
Note that filing a PCT application is not the only way to obtain patent protection overseas. You may also secure patents in the countries you elect by directly filing individual complete patent applications in each corresponding country. However, the filing cost of this stage can be quite significant if a large number of countries are selected. Because most inventors and small companies are not in a financial position to afford the filing costs so early on in the process, opting for the PCT application is the most common avenue before reaching the complete application process.
Important Disclaimer: The information on this website is not legal or professional advice. The information may:
- not be correct;
- only relate to the law or practice in a given country; and/or
- be outdated.
For more information, please contact the Site Administrator: Baxter IP.