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 more than 145 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

Priority and filing dates

During the application process, two dates are of particular importance:

  • The priority date is the date from which the inventiveness or innovativeness of your application will be considered. During the examination process, your application will be compared to information that was publicly available earlier than the priority date.
  • The filing date on which a complete application is lodged is the date from which the term of protection is calculated. Once the patent is granted, you will have the exclusive right to use your invention from the filing date.

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 145 countries are signatories to the Patent Cooperation Treaty, including Australia, New Zealand, European Union States, the USA, Canada, China, Japan:

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 more than 145 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.

Filing requirements for patents

Davies Collison Cave can help you with the often complex filing process for Australian patent applications. The types of information required to file a patent application will depend upon whether your application is for:

  1. a patent application first made in Australia
  2. the Australian (or ‘national’) phase of an international application
  3. a direct filing under the Paris Convention

Patent applications first made in Australia

Davies Collison Cave will require the following information to file an Australian patent application for you:

  • details of the priority claim(s) and the applicant and inventors, including their names and addresses;
  • a patent specification which fully discloses and describes the invention.

A Notice of Entitlement, detailing how the applicant obtained rights to the invention from the inventors and the right to claim priority from the applicant/s of the listed priority application/s, can be prepared and signed by us after the application is filed.

The Australian phase of an international PCT application

Timing considerations

The deadline for entry into the Australian national phase is 31 months from the earliest priority date claimed. This deadline can sometimes be extended, but not as a matter of right.

Required information

If the originating PCT application is in English, we simply require the details of the PCT application, such as the application or publication number.
If the originating application is not in English, we also require a verified translation of the specification, including any Article 19 and 34 amendments.

A Notice of Entitlement, detailing how the applicant obtained rights to the invention from the inventors and the right to claim priority from the applicant/s of the listed priority application/s, can be prepared and signed by us after the application is filed.

Direct filings under the Paris Convention

Complete applications under the Paris Convention must be filed within 12 months of the earlier, overseas application.

In order to complete the application we will require:

  1. details of the applicant, inventors and priority claims
  2. an English language specification detailing the invention
  3. a certified copy of the priority documents, though these can be lodged later
  4. verified translations of priority documents may also be requested by the Patent Office.