Navigating International Patent Protection in Australia

Australia continues to be an attractive destination for innovators worldwide due to its stable economy, transparent legal system, and strong commitment to fostering technological progress. As a result, securing patent protection in Australia is often an important component of a broader global IP strategy. Understanding the avenues available for entering the Australian system, from the Patent Cooperation Treaty (PCT) to the Paris Convention, is essential for efficient and commercially strategic decision-making.

PCT Pathway

PCT offers a unified international filing mechanism used by Applicants for seeking patent protection in over 150 contracting states, including Australia. Although the PCT does not grant a “world patent,” the PCT system provides a streamlined international application process that delays the significant costs associated with filing in individual countries. This route is often the preferred choice for applicants who are still evaluating the commercial potential of their invention or wish to keep their options open for seeking protection in multiple jurisdictions.

One of the key advantages of the PCT pathway is time. The Applicants have up to 31-months from the earliest priority date to decide which countries to enter for the “national phase” of the patent process. This time window allows the Applicants to assess commercial potential, refine product development, and evaluate competitive activity before substantial national costs arise.

International Phase

A PCT application begins with filing before a competent Receiving Office, followed by a mandatory international search carried out by an International Searching Authority (ISA), resulting in an International Search Report (ISR) and a Written Opinion on patentability. This provides an early indication of the strength of the invention and helps guide decisions about entering national phases worldwide. The Applicants have the option to file a “demand” for an international preliminary examination, which provides an opportunity to amend the application and receive a more detailed, non-binding opinion on patentability, known as the International Preliminary Report on Patentability (IPRP).

Entering the Australian National Phase

Entering the national phase entry in Australia is generally straightforward. In most cases, only the PCT application number or publication number is required. If the international application was not filed in English, a verified English translation of the patent specification is necessary. That said, Australian law simplifies the entry process by not requiring a formal Power of Attorney or inventor declarations, reducing administrative burdens and costs for the clients.

Upon successful entry into the Australian national phase, the application is treated as a standard Australian patent application.

The Australian patent office, IP Australia, does not automatically examine applications. Examination must be requested, either voluntarily at the time of filing or, more commonly, following a “Direction to Request Examination” issued by the patent office. This direction must be complied with within two months, although the overall deadline to request examination is five years from the PCT international filing date.

Upon examination, the application is assessed under Australian patentability standards. Professional assistance is often critical during this stage to ensure clear responses, appropriate amendments, and strategic positioning to achieve acceptance and grant for a full 20-year patent term.

Paris Convention Route

The Paris Convention for the Protection of Industrial Property provides an alternative, more direct route for Applicants seeking patent protection in Australia. This pathway is ideal for the Applicants who have a clear and immediate commercial strategy focused on a limited number of countries, including Australia. A key feature of the Paris Convention is the “right of priority.” This allows an Applicant to file a patent application in a member country and then, within 12 months, file a corresponding application in any other member country, like Australia, while retaining the filing date of the original application. This 12-month period is a critical deadline and provides a shorter timeframe for decision-making compared to the PCT route.

Choosing the Convention route means forgoing the centralized international search and examination phase of the PCT system. Instead, the Applicant can proceed directly with a national application in Australia. This can be a more cost-effective approach if Australia is a key market and the Applicant do not require the extended timeframe or broad international options offered by the PCT.

Once filed, the Convention application is prosecuted directly before IP Australia. By choosing the Paris Convention route, the Applicant can often expedite the examination process in Australia, as it is not delayed by the 30 or 31-month PCT international phase.

Key Considerations for Australian Patent Applications

Regardless of the pathway used- the PCT or Paris Convention route, several key aspects of Australian patent law and practice are crucial to understand. A fundamental requirement is the “Notice of Entitlement,” which must be filed before the application can be accepted. This document establishes how the Applicant derives their right to the patent from the inventor. Furthermore, Australia offers a 12-month grace period for disclosures made by the inventor or their successor in title before the filing of a complete patent application. This can be a valuable safeguard if there has been any public disclosure of the invention, but it is a complex area of law where expert advice is essential.

The examination process in Australia is rigorous. An invention must be new (novel), involve an inventive step (be non-obvious), and have a practical application (utility) to be patentable. Following successful examination and acceptance, there is a three-month period during which third parties may oppose the grant of the patent. Annual renewal fees, or continuation fees, are payable from the fourth anniversary of the international filing date to maintain the application or granted patent.

Why work with us?

Choosing the right local partner is paramount to successfully navigating the intricacies of the Australian patent system. Our firm is dedicated to providing an unparalleled level of service to our international clients and associate firms. We act as an extension of your team, offering clear, commercially focused, and timely advice. By entrusting us with your Australian patent portfolio, you are securing more than just a service provider; you are gaining a strategic partner committed to protecting your innovation and maximizing its value in the Australian market.

Our firm is committed to providing a high standard of service to international clients and associate firms. We offer:

• clear, commercially focused advice on selecting the optimal filing route;
• efficient handling of PCT national phase and Convention filings;
• strategic drafting and prosecution tailored to the Australian legal framework;
• expert management of examination, amendments, oppositions, and entitlement issues;
• precise oversight of all deadlines to safeguard patent rights.

Contact us today for a free consultation to discuss how we can assist you in achieving your intellectual property goals.