Contrary to the common opinion, there is no such thing as a "worldwide" or "global" patent. If patent protection is required in a foreign country a national patent application must ultimately be lodged in that country.
The options for attempting to obtain patent protection throughout the world are almost as many and as varied as the countries themselves. We attempt to summarise those options below, but we stress that foreign patent laws are complex and if you wish to obtain foreign patent protection we strongly recommend that you utilise the services and foreign links of a Patent Attorney.
Foreign countries fall into one of three categories as far as patent law is concerned:-
Australia is a member of the Paris Convention, along with many other countries of the world. It is possible to file a patent application in another member country of the Paris Convention, within 12 months of the filing date of the first filed patent application, and claim priority from the first filed patent application. Australia also declares some countries to be convention countries for the purposes of such priority claims.
Options for Seeking Overseas Patent Protection
There are generally two main options for seeking overseas patent protection. The selection of one of these options is determined by the countries that are of interest.
Foreign Patent Applications
Foreign patent applications should be filed in convention countries within 12 months of the filing date of the first filed Australian patent application, in order to claim priority. In this manner, any publication or use of the invention made by the patent applicant between the priority date and the foreign application filing date, will not affect the validity of a patent granted in that convention country.
There are some countries (non-convention countries) in which it is not possible to claim priority. In such countries, it is necessary to file patent applications at the time of filing your Australian provisional patent application, or at least before using or publishing your invention. Thus, at the outset, it is recommended that a determination be made as to the countries where patents are desired, so that options and costs can be determined, and a plan for applying for foreign patents can be put into place.
Aside from the few countries where priority cannot be claimed, there are two options for applying for patents in foreign jurisdictions. The first option is to apply for a patent in each of the countries of interest, while the second option is to file an international patent application.
The International Patent Application
In an international patent application, countries (and regions) bound by the Patent Co-Operation Treaty can be designated. Most major industrialised nations of the world are bound by the Patent Co-Operation Treaty, including the United States, Canada, Australia, Japan, China, Indonesia, and most countries in Europe. However, there are some countries that are not bound by this treaty, and in such countries a separate patent application would be required in addition to the international patent application.
The international patent application does not result in the grant of an international patent. Ultimately a patent application must be lodged in the countries (and regions) in which patent protection is required. This is known as entering national (and regional) phases. The period for attending to this is either 20 months or 30 months from the earliest priority date, dependent upon the procedure followed.
While the filing of an international patent application represents an additional cost, there are some benefits. One benefit is that options regarding the filing of foreign patent applications are maintained beyond the 12 month priority deadline, whereas it might otherwise not be possible to validly file patent applications in some countries once the 12 month priority deadline has passed. Another benefit is that there can be a lower up-front cost. Finally, there is an international search conducted during the course of the international patent application, and there is a procedure for examination of the international patent application, both of which can help in determining the likely fate of national phase entries, before committing to any expense of national phase entry.
The following countries are members of the Patent Cooperation Treaty (as at January 1 2008);
Extension of the European Patent
In addition, in an international patent application, it is possible to designate areas of Europe, Eurasia, and Africa as regional designations. For further information see below (please check with us for the up-to-date membership of each regional agreement): European Patent Austria, Belgium, Bulgaria, Switzerland, Cyprus, Czech Republic, Germany, Denmark, Estonia, Spain, Finland, France, United Kingdom, Greece, Croatia, Hungary, Ireland, Iceland, Italy, Liechtenstein, Lithuania, Luxembourg, Latvia, Monaco, Malta, Netherlands, Norway, Poland, Portugal, Romania, Sweden, Slovenia, Slovakia , Turkey
Extension States (States recognising European Patents): Albania, Bosnia and Herzegovina, the former Yugoslav Republic of Macedonia, Serbia.
Eurasian Patent Armenia, Azerbaijan, Belarus, Georgia, Kazakhstan, Kyrgyzstan, Moldova, Russian Federation, Tajikistan, Turkmenistan, Ukraine
OAPI a cooperative union of African countries comprising Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Congo, Cote d’Ivoire (Ivory Coast), Gabon, Equatorial Guinea, Guinea, Guinea-Bissau, Mali, Mauritania, Niger, Senegal, Togo
ARIPO a cooperative union of African countries comprising Botswana, The Gambia, Ghana, Kenya, Lesotho, Malawi, Mozambique, Namibia, Sierra Leone, Somalia, Sudan, Swaziland, Uganda, United Republic of Tanzania, Zambia, Zimbabwe