Patents are granted by the Patent Offices of individual countries. A patent granted in Australia will not stop people using an invention in other countries. To obtain patent protection in other countries, it is necessary to obtain a patent in each country in which protection is required. There are two ways of proceeding:
•lodge a separate patent application in each country of interest or
•lodge an application under the Patent Cooperation Treaty.
Each of these applications may claim priority from the filing date of a provisional or complete application in Australia, if made within twelve months of the original filing date.
Separate Patent Applications in Individual Countries
If protection is required in only a small number of countries, the usual method is to lodge a separate patent application in each country of interest. Most countries are parties to the Paris Convention and under this convention, once the first patent application has been filed in a member country (e.g. Australia), the filing of the corresponding applications in other Convention countries can be deferred up to twelve months from the first filing without loss of priority.
The cost of filing overseas patent applications varies from country to country. The costs in non-English speaking countries are usually greater due to the need to obtain translations of the patent specification and associated correspondence.
Patent Cooperation Treaty (PCT)
If an applicant is not sure which countries are going to be the major market for their invention, or if protection is required in a large number of countries, filing an application under the Patent Cooperation Treaty (“PCT”) is a cost effective option.
Most countries of the world are parties to the Patent Cooperation Treaty. Under the provisions of the PCT, a single International patent application can be filed with the International Bureau, designating those countries in the PCT in which patent protection is desired. This is called the “PCT phase”.
The PCT application does not take the place of individual “national” applications in each country, but defers the national processing of the patent application in each country. A separate application will still have to be filed in all the countries in which protection is required (called “National phase”) but the deadline for filing individual applications in those countries is deferred to 30 months from the priority date of the International (PCT) application.
The costs of filing applications in individual countries are additional to the cost of filing the International (PCT) application.
The PCT application option allows a patent application to be filed in one language at one Patent Office with one set of fees.
During the PCT phase, an International search is conducted and the applicant is provided with the results of that search. The applicant will therefore have the benefit of the search results before having to decide whether or not to proceed in any or all of the countries designated in the PCT application. Taking the search results into consideration, the PCT application can be amended if required, to distinguish the invention from any document located in the international search which can minimise future processing costs.
International Patent Application
European Patent Convention (EPC)
A number of European countries are parties to the European Patent Convention (“EPC”). Under the provisions of this Convention, a single “European” patent application can be filed with the European Patent Office, designating one or more of the countries in the EPC.
The patent application may be filed in either English, French, or German. The European patent application will be examined by the European Patent Office and if the application is accepted, a European “patent” will be granted. The European patent is then registered in individual member countries, and a translation of the European patent into the national language of each individual country is required.
The advantage of the European patent application procedure is that only a single application is filed and prosecuted, and translation costs are deferred until the applicant has been advised that a patent has been granted. If patent protection is required in more than three European countries, it is usually cost effective to file a European patent application.
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