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The patenting process in Australia

There are a number of ways to commence the patenting process in Australia:

  1. An Australian provisional application
    is filed with the Australian Patent Office and is an optional step before filing a complete application (see below). Provisional applications establish the ‘priority date’ of your invention while giving you more time to file your complete application. There may also advantages in some cases in filing provisional applications in the United States instead of in Australia.
  2. An Australian complete application
    is also filed with the Australian Patent Office and is required for the grant of a patent. The complete application may be for a standard patent, or an innovation patent.
  3. An international (PCT) application
    can be filed in Australia, which provides temporary protection for your invention in over 140 countries worldwide.
  4. Entry into the national phase
    is the process of converting an international (PCT) application into an Australian complete application , which is necessary in order to secure grant of a patent in Australia if a PCT application has been filed.

Normal events during prosecution of an Australian standard patent

 

Normal events during prosecution of an Australian standard patent

Australian provisional applications

How we can help

Davies Collison Cave patent attorneys are skilled in drafting provisional and complete applications for filing at the Australian Patent Office or, depending on your requirements, at the United States Patent and Trade mark office. Find out more »

Filling a provisional application (also known as a priority or basic application) with the Australian Patent Office is an optional first step in the patenting process.

Provisional applications establish the priority date of your invention, while giving you an additional 12 months to continue the patenting process by:

  • filing a complete application in Australia;
  • filing applications in other countries where you seek patent protection.

The provisional application is a legal and technical document that describes your invention. The provisional application will not be published until after a complete application is filed. This means the details of your invention will not be available to the public for some time.

Australian complete applications

You must file a complete application to be granted a patent in Australia. The complete application can either start the patenting process, or it can follow within 12 months of a provisional application or an overseas patent application. A complete application can be for either a standard patent or an innovation patent. (Learn more about the difference between innovation patents and standard patents).

Content and publication of your complete application

Complete applications include the patent specification that describes your invention, and the patent claims that define the extent of exclusive rights that you are seeking. The date the application is filed (‘the filing date’) is the date from which the term of protection is calculated.

The patent specification is published approximately 18 months from the earliest claimed priority date, after which the details of the invention described in the application will be publicly available.

Applications under the Paris Convention

The Paris Convention is an international agreement that allows patent applicants from member countries to use the filing date from their first application as the effective filing date in Australia as well.

In order to take advantage of the Paris Convention, an Australian complete application or a PCT application must be filed within 12 months of the date of filing the foreign original or basic application.

International applications under the Patent Cooperation Treaty (PCT)

Which countries are covered?

More than 140 countries are signatories to the Patent Cooperation Treaty, including Australia, European Union States, the USA, Canada, China, Japan:
» The current list of PCT countries from the World Intellectual Property Organisation (PDF)
» WIPO’s FAQs about the Patent Cooperation Treaty (PDF)

Although there are no ‘global patents’, there is an international application procedure under the Patent Cooperation Treaty which:

  • simplifies the process of filing applications in multiple countries;
  • can delay the costs of filing in PCT countries;
  • provides more time to assess the commercial viability of an invention before complete applications are filed in each country.

An international PCT patent application made in Australia can provide simultaneous protection in over 140 countries worldwide. When an international application is filed, the right to obtain patent protection in most countries is preserved for a period of 30 or 31 months from the priority date.

Entry into the national phase of an international application

If you have filed an international application overseas and have designated Australia as a PCT country in which you seek protection, you must continue the patent application process locally.

This step, known as ‘entering the national phase’ must occur within 31 months from the earliest priority date.

Protect your IP with the best advice

Patent filing and application procedures can be complex, and the consequences of poor drafting or timing can be significant. Davies Collison Cave is Australia’s largest and most experienced patent attorney firm, with over 100 years of experience filing over 100,000 patent applications. We can help safeguard the integrity of your intellectual property. Get in touch with our patent attorneys to find out how »