- In Patents
- 7 March 2018
Protecting Inventions Internationally
By Christy Grobbler PhD
Granted Australian patents only protect inventions within Australia. For inventors seeking protection for their invention outside Australia, there are options available.
Is there an international or worldwide patent?
An international or worldwide patent does not exist. Foreign patent protection is only available in the form of one or more national patents. Nevertheless, there are options available for inventors who wish to protect their invention internationally.
PCT application
One option is to file a single patent application or ‘PCT application’ under the Patent Cooperation Treaty (PCT). A PCT application effectively creates pending patent rights in each country of the 152 PCT member countries. A PCT application is commonly referred to as an international patent application. In order to obtain national patent rights, a PCT applicant must formally proceed before the national patent office in each country of interest (or region in the case of Europe) within 30 or 31 months from the first filing. This is known as entering the national phase.
Paris convention application
Another option is to directly file a separate national patent application in each country of interest under the Paris convention for the Protection of Industrial Property (Paris convention). The Paris convention has 177 member countries.
The PCT application versus the convention application
Both the PCT and Paris convention provide a system which allows a person to file a first patent application in their home country that provides essentially pending worldwide patent rights for 12 months. This preservation is perfected if a PCT application and/or one or more convention applications are filed within the 12 months. For countries in which no application is filed, patent rights are lost.
It is important to remember that the decision to grant a patent is dependent on the laws of each country. The greatest benefit of filing a PCT application is that it allows a person to file a single application without fear of immediately losing rights to the invention in other PCT member countries. A PCT application is therefore useful for an invention having a global, or potential global market.
Further, a PCT applicant will have more time to consider the value of the invention in different member countries, as well as to assess different commercial opportunities and/or to organize funds. In this way, the PCT application can act as a place holder, allowing the applicant to delay making further decisions for up 18 months from the PCT filing date. A PCT application can also act as a deterrent or a source of frustration to potential foreign competitors during that 18 month period as a foreign competitor cannot know whether the applicant will enter the national phase in their country.
Applications filed via the PCT route are also particularly advantageous in that the applicant is provided with results of an international search. This can provide invaluable insight into the international patentability of the invention that may assist the applicant with making decisions as to which countries they would like to progress their application. Further, positive international search results may help applicants attract potential investors, licensees and/or business partners.
On the other hand, filing a convention application may be more appropriate for inventors who only have a commercial interest in specific countries. Filing a convention application may be more economical as it avoids the additional costs associated with filing a PCT application on top of the national phase filing fees for each desired country. Thus, a convention application may be more appealing to more cost-conscious applicants looking to file in only a few countries with well-defined markets. Also as convention applications are filed at selected patent offices 18 months before a PCT application enters national phase, patent protection is likely to be granted faster. This may be particularly advantageous for inventions that are market ready and/or have a short commercial or shelf life.
Further, an applicant can file both a PCT application and one or more convention applications in key market countries. This means that an applicant can keep their options open while pursuing enforceable patent rights to protect their current market position. A separate convention application will need to be filed in countries that are not PCT members.
How do I choose what is best for me?
This depends on a number of factors including the relevant industry, financial situation, technology, business plans, product market readiness, level of innovation, commercial planning and different patentably requirements of foreign patent offices. The experienced Patent Attorneys at IP Gateway are able to assist in developing a tailored foreign filing strategy that best meets an applicant’s business and financial situation.
If you have a Patent, Design or Innovation that you’d like to be protected or you want to discuss how to secure protection for your Intellectual Property with qualified award winning experts, please contact IP Gateway Patent and Trade Mark Attorneys on 07 38083566 or email us at mail@ipgateway.com.au