Stage 3: PCT International Patent Applications
How to patent an idea internationally?
The First Stage of the patent application process is to file a provisional patent application as discussed. This secures an international filing date for your invention. The Second Stage, which is optional, is to have an International Novelty Search conducted.
The Third Stage is the filing of a complete application. This must be done before 12 months from your earliest priority date. This is generally the date your first provisional patent application was filed.
Importantly, any improvements made to your invention in the first 12 months of the process can be added to the specification that is filed with the complete application.
What are my options?
Before the 12 month date, you will need to file one or both of:
- Option A: an international (or ‘PCT’) patent application.
- Option B: national patent applications in the countries where you want patent protection
If no application is filed by the 12 month date your IP rights will lapse.
Here is some information about Options A & B:
Option A: an international (or ‘PCT’) patent application.
What is a PCT international patent application?
A PCT (“Patent Cooperation Treaty”) patent application extends the applicant’s right of priority to 157 member states. In other words, under the PCT, the priority date of the Stage 1: Provisional Patent Application will be recognised in all member states of the PCT for the purposes of examination of a patent application and for enforcement of any granted patents in each designated country. The PCT is administered by WIPO.
When is a PCT international patent application most beneficial?
If:
- You are not sure as to the final list of countries you want to pursue protection in.
- You are looking at licensing your invention - because licensees generally value the ability to choose the countries they want patent coverage in.
- You want to push back the costs associated with filing in each country.
- You want to have your patent application reviewed and examined centrally to streamline examination processes and costs in each country.
A PCT patent application will allow you to pursue patent protection by making a national phase filing in any of the 157 PCT member countries right up until 30 or 31 months after the priority date, depending on the country.
If you don’t keep your rights alive by filing an international patent application then you will be limited to seeking patent protection in the countries where you have filed national patent applications.
It’s important that you understand that you will not get an international patent (i.e. patent rights) by filing an international patent application. You will still need to file national phase patent applications before in order to be granted a patent in those countries.
The only country of significance that the PCT Treaty does not cover is Taiwan. A patent application can be filed in Taiwan alongside the PCT application if protection is sought there.
Publication of an international application
PCT patent applications are published during the international phase, at 18 months from the priority date.
Search report and written opinion
The PCT international patent process also includes an International Search and Written Opinion in relation to the patentability of your invention. If an International-Type Search was performed, a partial refund is available for the cost of the PCT International Search.
If the Examiner has raised objections in the Written Opinion, a response can be filed supported by amendments made to the claims of the patent application, if necessary, together with a Demand for International Preliminary Examination (IPE), to better position your application for acceptance. The IPE, together with an analysis of the results by your patent attorney, can give you an idea of the scope of patent protection you may be able to secure in national patent offices around the world.
During the IPE, your patent attorney can respond to the Written Opinion to attempt to have the examiner consider your invention patentable and issue a clear International Preliminary Report on Patentability (IPRP). A clear report can greatly increase the value of your IP Asset and is generally held in high regard by potential investors or licensees.
If you have any questions related to filing a patent application, feel free to contact any one of the patent attorneys at Baxter IP.
Decide if you need an international patent application
It is advisable to speak with a commercially focussed patent attorney to decide if you need a PCT application and to start thinking about filing a PCT application.
Factors to consider include your commercial plans such as meetings with manufacturers or any R&D timelines. It is important to consider and share your business plans with your patent attorney at the beginning of the patenting process.Your patent attorney can then recommend suitable options for you.
Option B: National patent applications
These are filed directly with the national patent offices in the countries where you want patent protection.
We recommend this option if you only want protection in a small number of countries (three or less), and are willing to forgo patent protection anywhere else.
Want to Protect your idea?
Which countries should you choose?
We have listed below 9 strategies to consider when choosing where to pursue patent protection:
- Your largest markets: Particularly in cases where your product could be manufactured anywhere.
- Countries where competitors would be likely to manufacture an infringing product: Particularly where competitors have existing manufacturing facilities that cannot be easily relocated.
- Countries where you are considering manufacturing: This helps avoid a manufacturer selling your product on the side.
- Your home ground: File in Australia to protect your home market – often the market that is easiest to access commercially.
- Your pilot markets first: Having a national patent filed in the countries you are commercialising in initially enhances credibility in those markets.
- The United States: As the largest consumer market in the world, this jurisdiction represents by far and away the best value for money in terms of IP protection.
- Europe: Many countries can be protected by a single application and it represents the 2nd largest consumer region in the world.
- Countries where you patent is being infringed: in order to be able to address that infringement with an enforceable right as soon as possible.
- Your future markets: As patents have a 20 year lifespan, it is important to consider that the markets that are most valuable now may not be the markets that are most valuable in 5 or 10 years time.
Reminder about the commercial benefits patent protection will provide you
- Patents enable you to license or sell your technology to a third party.
- Patents are the most powerful tool for dissuading or stopping competition for your product. Our firm successfully enforces intellectual property rights in Australia and other countries on a monthly basis, stopping the sale of counterfeit goods and infringements of patents, designs and trade mark rights.
- As intellectual property assets, patents may increase the value of your business when recorded on your balance sheet.
- Patents, especially international patent applications, may be key to obtaining investment in your product. Registered IP provides investors with reassurance that a competitive moat exists around your innovative product or service. This moat safeguards, in turn, your innovation, pricing and profit margin. If a business is unsuccessful, as a residual asset, a patent may be licensed or sold to produce a return for you or your investors.
