International Patent Protection for Australian Businesses

Protecting Your Inventions in Overseas Markets

If you intend to commercialise an invention internationally, it is important to develop an appropriate patent filing strategy from the outset.

Australian Patent & Trademark Services (APTS) assists Australian businesses, inventors and companies with international patent applications. We help identify suitable filing pathways, coordinate overseas patent attorneys and manage the process of seeking protection in the countries that matter to your commercial objectives.

There is no single worldwide patent that automatically protects an invention in every country. Patent rights are territorial, and protection must be pursued in the jurisdictions where you require rights.

The most appropriate strategy depends on your intended markets, commercialisation plans, available budget, development timetable and the nature of your invention.

International Patent Filing Strategies

There are several ways to seek patent protection overseas. The appropriate approach will depend on your circumstances and the relevant filing deadlines.

1. Direct Overseas Patent Applications

You may file patent applications directly in selected overseas countries. Where an earlier Australian application exists, it may be possible to claim priority from that application, provided the relevant requirements and deadlines are met.

This approach can be suitable where you have already identified the countries in which protection is commercially important.

2. The Patent Cooperation Treaty (PCT) Process

The Patent Cooperation Treaty (PCT) provides an international filing procedure administered by the World Intellectual Property Organization (WIPO). It allows applicants to file one international patent application that can preserve the opportunity to seek patent protection in multiple participating countries.

A PCT application is not an international patent or a worldwide grant of patent rights. It does not provide automatic protection in every country.

The international phase generally includes an international search and written opinion, with further examination procedures potentially available. The process provides additional time to assess the invention, consider commercial opportunities and decide which countries should be pursued.

3. National Phase Applications

To continue seeking patent protection in individual countries, the applicant must enter the national or regional phase in the relevant jurisdictions within the applicable deadlines.

For many PCT applications, the national phase deadline is 30 months from the priority date, although certain jurisdictions have different deadlines or requirements. The exact deadline must be checked for each country.

If the relevant national phase deadline is missed, the opportunity to pursue protection in that jurisdiction may be lost, subject to any applicable restoration provisions.

Why Use the PCT Process?

The PCT process can provide several commercial and strategic advantages:

One international application can preserve the opportunity to seek protection in multiple participating countries.
It provides additional time before substantial national phase expenditure is generally required.
An international search and written opinion can provide an early assessment of relevant prior art and patentability issues.
It allows businesses additional time to assess market potential, investment opportunities and commercialisation plans.
It provides flexibility when deciding which overseas markets justify the cost of pursuing patent protection.

The PCT route is not necessarily the best option for every invention. Direct national filings or other strategies may be more appropriate depending on the countries involved, costs and commercial timetable.

Choosing the Right Countries

International patent protection can become expensive, particularly when applications proceed into multiple national jurisdictions. Selecting countries should therefore be a commercial decision, not simply an exercise in filing as widely as possible.

Factors to consider include:

Where your products or technology will be manufactured.
Where your principal customers and markets are located.
Where competitors may manufacture, sell or distribute similar products.
Where licensing or commercialisation opportunities may arise.
The likely cost of national phase entry, prosecution and ongoing maintenance.
The commercial value of obtaining enforceable patent rights in each jurisdiction.

Our aim is to help you develop a filing strategy that supports your business objectives while taking account of the costs and practical requirements of overseas protection.

Our International Patent Services

APTS can assist Australian applicants with the coordination and management of international patent matters, including:

Reviewing international patent filing strategies.
Advising on direct national filings and PCT applications.
Coordinating overseas patent applications through local associates.
Managing national phase entry requirements and deadlines.
Coordinating instructions and communications with overseas patent attorneys.
Monitoring prosecution progress and reporting overseas developments.
Assisting with international patent portfolio administration.
Reviewing upcoming deadlines and anticipated overseas patent costs.

We work with overseas patent associates to facilitate filing and prosecution in the jurisdictions relevant to your business. The appropriate local professionals undertake the jurisdiction-specific work and provide advice where required.

International Patent Costs and Planning

International patent costs vary significantly depending on the number of countries selected, the complexity of the invention, translation requirements, local attorney fees, official fees and the extent of examination and prosecution required.

A PCT application can defer the decision to proceed with individual national or regional applications, but it does not eliminate the eventual costs of pursuing protection in those jurisdictions.

We can help identify anticipated filing stages and coordinate cost information to assist with your international patent budget and planning.

Developing Your International Patent Strategy

International patent applications involve important deadlines and commercial decisions. The best approach is to consider your overseas filing strategy early, ideally before the priority period following your initial application expires.

APTS works with Australian businesses and inventors to coordinate international patent protection, taking account of the invention, intended markets and commercial objectives.

Discuss Your Overseas Patent Requirements

If you are considering patent protection outside Australia, contact us to discuss your invention and intended markets.

To assist us in assessing your requirements, please provide:

A brief description of your invention.
Whether you have already filed an Australian or overseas patent application.
The filing date and any existing priority details.
The countries in which you are considering protection.
Your anticipated commercialisation plans and timing.
Any known upcoming patent deadlines.

Request an International Patent Quote

Alternatively, call APTS on 1300 138 802.