Patent Cooperation Treaty (PCT)
A PCT application may be appropriate as a first application, if the invention is well developed and a decision has been made that patent protection in a number of countries will follow. Although it can be a first application for an invention, more often, a PCT application will follow on from, and claim priority from, a Provisional Patent application, or may be filed based on a Standard Patent application if that is the first application for the invention. In each case, if claiming priority from an earlier filed application (priority document), the PCT application must be filed before the elapse of 12 months from the earlier filing date.
The PCT application does not itself lead to a patent but provides the right to file patent applications in a large number of countries signatory to the Patent Cooperation Treaty. Those “national phase” filings must be made within 30 (some countries 31) months from the earliest filing date, either of an earlier priority document, or of the PCT filing itself, if it is the first application for the invention.
General requirements are similar to those for a Standard Patent application. It is quite common for a PCT application to adopt the specification of an earlier filed Australian patent application.
Obtaining Overseas Patent Protection
Generally speaking, patenting is still a country by country exercise although there are provisions for some blocks of countries for which a single application can be filed, such as for those countries signatory to the European Patent Convention. Except in the case of New Zealand, applications for patent in overseas countries must be through accredited patent attorneys or agents in those countries, acting under instructions from Australian attorneys (or may be instructed by the applicant him or herself).
An overseas application can, for most overseas jurisdictions, be based on a PCT application, an earlier filed Australian application (the priority document), or may be the first filing for an invention
It is often the case that at the 12 month deadline for filing an overseas application based on an earlier filed Australian application, the commercial viability of the invention is not clear, or the particular countries of interest undecided. A PCT application is then an appropriate next step in obtaining eventual overseas protection, providing up to an extra 18 months to test the commercial viability of the invention and decide on appropriate markets.
Instead of using the PCT route, separate national patent applications may also be filed in each country of interest, either based on an earlier filed Australian application or as a first application. Through our extensive network of associates, we are able to offer expert advice to suit your requirements.
Separate national patent applications may also be filed in each country of interest. Through our extensive network of associates, we are able to offer expert advice to suit your requirements.
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