United States, Europe, Asia and other jurisdictions
We have a network of overseas attorneys, and with our status as a top tier patent attorney practice, we can provide you with access to the leading patent practitioners globally and in particular in key markets of the United States, Europe and Asia. We liaise with the foreign attorneys to handle all requirements and deal with any objections raised by the foreign patent offices.
Overseas patent protection
When an Australian patent is granted, the protection only has effect throughout Australia and Norfolk Island. To obtain patent protection outside Australia, it is necessary to file foreign patent applications within a limited period. This can be achieved by filing patent applications in each individual country where patent protection is desired. Most countries have a patents system. Foreign patent applications generally follow a similar procedure as for Australian standard patent applications. However, the timing for examination can vary widely from country to country depending on the backlogs at the various patent offices. Thus after the initial filing costs are incurred there will be downstream costs associated with examination before the various national patent offices.
Some countries are also grouped into regions which permit a single application to be filed and granted as a patent. One example is a European patent application which is examined by the European Patent Office.
Once granted, the patent still has to be validated in the European countries of your choice.This involves assigning an agent in each country and may involve translations of claims into some of the various national languages. After grant, renewal fees are also payable in each country. Other regional patents include a Eurasian patent for most of the former Soviet states and regional African patents.
Can I defer the filing of my foreign applications?
Yes. Australia and most other countries are members of the Paris Convention, an international agreement that allows overseas patent applications to be deferred for up to 12 months from your initial Australian application while still retaining the priority date of the initial Australian application. Like Australia, to assess novelty, most countries take into account any publication or use which occurred before the earliest priority date (see ‘Criteria for a valid patent’) so it can be important to rely on this convention and retain the earliest possible priority date for your overseas applications. A small number of countries are not members of this international convention. So if patent protection outside the principal industrialised countries is contemplated, this should be discussed with your patent attorney before there is any publication or non-confidential disclosure of the invention to others, even if an Australian patent application has already been filed.
At the 12 month anniversary of your initial Australian application, instead of filing individual national and regional applications, an international application can be filed instead under the provisions of the Patent Cooperation Treaty (PCT) as discussed below.
What if I miss the 12 month deadline?
After the 12 month anniversary of the initial Australian application, it may still be possible to file foreign patent applications—it largely depends on the nature of the use and publication of the invention which has taken place up to that point. A few countries such as the United States and Canada have grace periods which can be relied on, even where full disclosure of the invention has already occurred. We can provide advice in any particular situation.
What is an international application (PCT)?
One option for applying for foreign patents is to file a single international patent application at the Australian Patent Office under the provisions of the Patent Cooperation Treaty (PCT). The international application can designate all of the countries and regions that are members of the PCT, referred to as ‘PCT contracting states’. A current list of PCT contracting states can be obtained by clicking on the hyperlink to ‘Contracting States’ at the bottom of the web page at www.wipo.int/pct/en/treaty/about.htm.
If a country of interest is not on the list, then it will be necessary to file a separate application in that country. This applies in particular to some South-East Asian, Latin American and Middle Eastern countries. Freehills Patent Attorneys can provide further information about patent systems in countries of interest to you.
It is important to note that an international application will not result in an international patent. The international patent application merely provides a mechanism for preserving your rights in a large number of countries for a limited period, at the end of which it will still be necessary to file national and/or regional applications in the countries of interest to you. This filing of national or regional applications is called ‘national phase entry’ or ‘regional phase entry’.
What is the process for an international application?
The international application is usually filed before the 12 month anniversary of the initial Australian application to retain the priority date under the Paris Convention (see ‘Can I defer the filing of my foreign applications?’). The international application reserves your rights in a large number of countries for an additional 18 months approximately, (30 months from the initial Australian application to be precise). Thus the relatively high cost of overseas applications can be deferred for an additional 18 months.
As with an Australian complete application, an international application is published approximately 18 months from the initial Australian application. Other advantages in filing an international application include an international search which is conducted automatically as well as the opportunity to amend the application to take account of any relevant prior art that is found by the search. For instance if relevant prior art comes to light then the international application can be amended once instead of having to amend a number of national applications in a like manner. Amendments can be made within two months of the international search report or during optional international preliminary examination.
The preliminary examination procedure does not remove the requirement for examination of the individual national phase applications before the respective national patent offices. However, such national examinations can be streamlined and be less costly if patentability issues are dealt with during the life of the international application.
Where should I file foreign patent applications?
Decisions about where to seek patent protection should be carefully made since foreign patent applications are expensive. In general, a patent can be used to stop others from manufacturing, using or selling your invention in the country for which it is granted. So you can protect markets or protect places of manufacture. For instance if you believe that the product should sell well in the United States, United Kingdom, France and Germany, then you should consider filing patent applications in each of those countries (or instead the United States and Europe) to stop others from selling your invention in those countries. On the other hand, you can file patent applications in manufacturing countries to stop others from manufacturing the invention in those countries, for example China and South Korea.
Freehills Patent Attorneys can provide strategic advice about securing patent protection in foreign countries.
When selecting the countries of your choice for national and regional protection, you should also budget for downstream costs for examination and renewal fees. As a rule of thumb, for each country you should budget downstream costs as being at least as much as the initial filing cost for that country.
Examination before national patent offices
Examination of foreign patent applications usually follows a similar procedure as that for Australia. However some countries examine the applications automatically, for example United States. Timeframes vary dramatically from country to country. The United States, New Zealand and China are usually the first to issue an examination report with Europe and Australia at the slower end of the spectrum. Japan and Canada take the longest to issue examination reports, generally because the deadline to request examination is a long time from the filing date.
In each case, our foreign patent agents forward the examination reports to us. We send these on to you, usually with recommendations as to how we can overcome any objections raised. Because we have prepared the application, we are usually in the best position to give advice as to how to overcome relevant prior art, in consultation with you. Our foreign patent agents are best placed to advise us on peculiarities of foreign law and to meet the requirements of foreign patent offices.
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