Protecting your invention internationally

There is no such thing as an international or worldwide patent. For the most part, patents are granted on a country-by-country basis. Fortunately, you don’t need to decide which countries are of interest up front.

Start with a provisional application

Often an Australian provisional patent application is recommended as a first step, regardless of whether you’re looking to patent in Australia only, in a number of countries, or if you’re simply not sure yet.

We can prepare the application for you. To get started we’ll need a description of your invention, although it’s not necessary to have a prototype. The wording of the patent application is critical.

Then file further applications

Twelve months after filing the provisional patent application, it’s time to file separate national patent applications in the countries of interest and/or to file an international patent application. These applications may simply re-use the wording of the provisional patent application, but can also include additional details to secure the best possible protection for aspects of the invention developed since the provisional patent application was filed.

An international patent application

International patent applications cover about 140 countries and last until 30 months from the first patent application being filed. At the end of the 30 months it’s time to convert the international patent application into national patent applications in the countries of interest. This is called ‘entering the national phase’.

Filing an international patent application is a popular option. Amongst other benefits, it defers selecting the countries of interest and the significant expense of filing separate national patent applications by about 18 months. This is more significant if you are interested in pursuing patent protection in a large number of countries, or if you are unsure as to which countries are of interest. On the other hand, if you only wish to proceed with patent protection in a small number of countries (e.g. Australia, New Zealand and the US), filing separate national applications will likely be more cost-effective.

National examination

Examination in each country typically commences two or three years after the national patent applications are filed. In most countries, if examination is successful the application will be accepted (or ‘allowed’) and a patent granted unless a third party (e.g. your competitor) formally opposes the grant of a patent. In most countries renewal fees are payable, typically commencing about four years after the first non-provisional patent application was filed.