International Patents

Australia is a member of the Paris Convention, along with many other countries of the world. It is possible to file a patent application in another member country of the Paris Convention, within 12 months of the filing date of the first filed patent application, and claim priority from the first filed patent application. Australia also declares some countries to be convention countries for the purposes of such priority claims.

Foreign Patent Applications

Foreign patent applications should be filed in convention countries within 12 months of the filing date of the first filed Australian patent application, in order to claim priority. In this manner, any publication or use of the invention made by the patent applicant between the priority date and the foreign application filing date, will not affect the validity of a patent granted in that convention country.

There are some countries (non-convention countries) in which it is not possible to claim priority. In such countries, it is necessary to file patent applications at the time of filing your Australian provisional patent application, or at least before using or publishing your invention. Thus, at the outset, it is recommended that a determination be made as to the countries where patents are desired, so that options and costings can be determined, and a plan for applying for foreign patents can be put into place.

Aside of the few countries where priority cannot be claimed, there are two options for applying for patents in foreign jurisdictions. The first option is to apply for a patent in each of the countries of interest, while the second option is to file an international patent application.

The International Patent Application

In an international patent application, countries (and regions) bound by the Patent Co-Operation Treaty can be designated. Most major industrialised nations of the world are bound by the Patent Co-Operation Treaty, including the United States, Canada, Australia, Japan, China, Indonesia, and most countries in Europe. However, there are some countries that are not bound by this treaty, and in such countries a separate patent application would be required in addition to the international patent application.

The international patent application does not result in the grant of an international patent. Ultimately a patent application must be lodged in the countries (and regions) in which patent protection is required. This is known as entering national (and regional) phases. The period for attending to this is either 20 months or 30 months from the earliest priority date, dependent upon the procedure followed.

While the filing of an international patent application represents an additional cost, there are some benefits. One benefit is that options regarding the filing of foreign patent applications are maintained beyond the 12 month priority deadline, whereas it might otherwise not be possible to validly file patent applications in some countries once the 12 month priority deadline has passed. Another benefit is that there can be a lower up-front cost. Finally, there is an international search conducted during the course of the international patent application, and there is a procedure for examination of the international patent application, both of which can help in reaching a determination as to the likely fate of national phase entries, before committing to any expense of national phase entry.

The following countries (as at November 14 2005), may be designated in an international patent application.
Please contact us for more up-to-date information.

In addition, in an international patent application, it is possible to designate areas of Europe, Eurasia, and Africa as regional designations. For further information see below.

Regional Patent Applications

Regional patent applications can be filed, both directly, and via an international patent application. The filing of a regional patent application represents a considerable cost saving, compared with the cost of filing separately in all of the member countries. There are four main regional patents available, which are the European patent, the Eurasian patent, and two African regional patents known as OAPI and ARIPO.

The following table sets out the countries that can be covered by such regional patent applications.