A guide to applying for your patent overseas

Copyright

All content in this publication is provided under a Creative Commons Attribution 4.0 International (CC BY 4.0) licence, with the exception of:

• the Commonwealth Coat of Arms

• our corporate logo

• photographs of our staff and premises

• content provided by third parties – including photographs, logos, drawings and written descriptions of patents and designs.

Third party copyright

We have made all reasonable efforts to:

• clearly label material where the copyright is owned by a third party

• ensure that the third party has consented to this material being presented in this publication.

Permission may need to be obtained from third parties to re-use their material.

© Commonwealth of Australia 2014

Attribution

The CC BY licence is a standard form licence agreement that allows you to copy and redistribute the material in any medium or format, as well as remix, transform, and build upon the material, on the condition that you provide a link to the licence, you indicate if changes were made, and you attribute the material as follows:

Licensed from the Commonwealth of Australia under a Creative Commons Attribution 4.0 International Licence.

Contact us if you have any enquiries about our copyright licence or the use of material in this publication.

Disclaimer

This application guide aims to provide a simple introduction to the Patent Cooperation Treaty (PCT) system for gaining patent protection. This guide is designedtohelpyouprepareandfileaninternationalpatent application under the PCT. It does not cover every issue that may come up and you should not regard this guide as an authoritative statement on the relevant law and procedure. You should also note that the requirements may change from time to time and while we make every effort to ensure the information presented is accurate, you should check the World Intellectual Property Organization’s (WIPO) PCT Applicant’s Guide before making your application.

A guide to applying for your patents overseas 3

ContentsI have an invention and I want to protect it around the world! 4

What is the Patent Cooperation Treaty? 5

First in, best dressed 7

The international phase 8

The national phase 11

Searches 12

In more depth 13

Flowchart of an international patent application 19

A bit of advice 21

PCTonlineelectronicfiling 22

Fees 24

Contact us 25

Contacting WIPO 27

Glossary of terms 28

A guide to applying for your patents overseas 4

I have an invention and I want to protect it around the world!First of all you need to be aware that there is no such thing as a ‘world patent’.

An Australian patent provides protection only within Australia. To obtain similar protection in other countries you generally have two choices:

• fileseparatepatentapplicationsineachcountry.Thiscanbecosteffectivewhenyoufileinonlya few countries.

• fileasingleinternationalapplicationunderthePatentCooperationTreaty(PCT)whichis administered by the World Intellectual Property Organization (WIPO). These types of applications are known as ‘PCT applications’. This path gives your application automatic effect in over 140 countries and allows you further time to decide whether you want to pursue patent protection and in which countries.

Whichever option you choose, you will still end up with separate patent applications in each country. ThePCTissimplyamethodoffacilitatingthefilingofapatentapplicationinanumberofcountriessimultaneously and all patent rights are granted by national or regional patent systems. This application guide outlines the process of applying for international patents through the PCT. It is a matter of balancing the cost of patent protection in particular markets with your business strategies for those markets.

When you make a PCT application your application will automatically designate all the countries that are a signatory to the Treaty (sometimes called ‘member countries’, ‘member states’, or ‘contracting states’) on the date of your application. You still need to meet the national requirements in each country where you want patent protection but the costs of registration can be deferred for a significantperiod.Youmaybeabletodeferyournationalfilingcostsforupto30monthsformostcountries and 31 months for Australia.

This gives you extra time to assess the value of your invention and its export potential before committingtothehighcostsinvolved.Thisisasubstantial,tangiblebenefitifyouarejuststartingout with a new piece of technology and a new business.

A guide to applying for your patents overseas 5

What is the Patent Cooperation Treaty?The PCT is an international treaty administered by the International Bureau (IB) of the WIPO, with headquartersinGeneva,Switzerland.ThemainpurposeofthePCTsystemistoprovideaunified,simplepatentapplicationprocedureforfilinginmultiplecountries.

ThePCTenablesyoutofileasinglePCTapplicationthathasthesameeffectasfilingaseparateapplicationinallofthePCTmembercountries.ThePCTapplicationisfiledwithaReceivingOffice(RO),whichchecksandprocessesyourapplicationaccordingtotheTreatyandRegulations.

WhoiseligibletofileaPCTapplication?TofileaninternationalPCTapplicationatleastoneapplicantorinventormustbeanationalorresidentofaPCTContractingState.AustraliaisaPCTContractingStateandwearetheROforinternationalapplications made by Australian nationals or residents. For an up-to-date list of Contracting States see WIPO’s member page. After the PCT application is processed under the PCT system, the IB sends anotificationtoallofthePCTcountries.Eventually,ifyouchoosetocontinueyourapplicationfor separate patents, your application will be examined according to the national patent laws of each country you choose.

Why should I choose the PCT system?Filing an international PCT application has the following advantages:

• asingleapplicationisfiledwhichhaseffectinallthemembercountriesofthePCT.

• formality requirements are similar to those for an Australian patent application.

• you do not initially need to provide a translation of your application into the languages of the countries you select for patent protection.

• afterfilingaPCTapplicationyouwillreceiveanInternationalSearchReport(ISR)andanexamination report called a Written Opinion of the International Searching Authority (WOISA) or otherwise called an International Search Opinion (ISO)* which should give you an indication as to the strength of your patent application before you decide whether you want to pursue patent protection.

• theoptionforanInternationalPreliminaryexamination(IPE)isavailabletoyoutofurtherevaluatethe chances of getting a patent before incurring the expenses involved in obtaining separate patents in different countries. You may also make changes to your application (see the In more depth section of this guide).

• the PCT system gives you extra time to reassess the value of the invention and its export potential before committing to high costs.

• asthereisnorequirementforyoutorequestanIPEortoenterthenational phase for any country, you may stop the process of the international application at any time to avoid incurring further expense.

*This is published by the IB at 30 months after the earliest priority date as an International Preliminary ReportonPatentability(ChapterI)(IPRPI),whichiscommunicatedtoalldesignatedofficesunless youoptforIPE.

A guide to applying for your patents overseas 6

How does the PCT work?The PCT system has two distinct phases (stages) of patent procedure — the international phase, followed by the national phase.

The international phase provides you with:• recognition of the priority date in all member countries of the PCT.

• accesstoanInternationalSearchReport(ISR),awrittenopinion(WO)oftheInternationalSearching Authority (ISA) called an International Search Opinion (ISO) and, if requested, anadditionalexaminationreportcalledanInternationalPreliminaryReportonPatentabililty(ChapterII)(IPRPII)whichallowsyoutoassessthepatentabilityofyourinvention.

• a WIPO publication number and PCT application number. These numbers are useful when commercialising your invention because they prove you have applied for a patent.

• the opportunity to amend your application - taking into account any reports or searches.

The national phase:• allows you to pursue your patent application in separate countries that you select, either directly orthrougharegionalpatentofficesuchastheEuropeanPatentOffice(EPO).

• maybequickerbecausepossiblebarrierstopatentabilityhavebeenidentifiedintheinternational phase.

Your PCT applicationA PCT application consists of the PCT request form and the same documents (a description, claims, drawings, where required, and an abstract) as a standard Australian patent application. The same documents are required because upon entry into the national phase your application is considered in the same way as a standard patent application. For more information on the criteria for patents contact us.

The provisions of the PCT and the drafting and prosecution of patent applications are all complex matters. You are strongly advised to obtain professional advice from patent attorneys or IP professionals beforefilinganinternationalapplication.

A guide to applying for your patents overseas 7

First in, best dressed

Priority datesAll patent applications (including PCT applications) have a priority date. Priority dates are extremely important when considering whether an invention claimed in a patent application is new (the technical termisnovel).Iftwoapplicantsfiletwopatentapplications(onseparateoccasions)claimingthesameinvention, the patent will be given to the application with the earlier priority date, all other matters being equal.

The Paris Convention and how it protects youThere is an international agreement called the Paris Convention, which allows patent applicants to use thedateoftheirfirstpatentapplicationinonecountryastheprioritydatefortheirapplicationsinothercountries. This situation applies only if the applicants make their subsequent applications within 12 monthsofthedateofthefirstpatentapplication.

A PCT application can claim priority from:

• an earlier overseas application in a country which is party to the Paris Convention

• a provisional application

• a standard application

• an earlier PCT application

• an innovation patent.Priority may be claimed from more than one of these patent applications.

Care should be taken to check the national requirements of those countries in which you wish your PCT application to proceed. You may be able to proceed in a limited number of countries even if the invention has been published but a patent has not been granted. In these circumstances it would be wise to seek professional assistance. See our website for links to some IP professionalsandsearchfirms.

A guide to applying for your patents overseas 8

The international phaseInAustralia,weactasaRO,ISAandInternationalPreliminaryExaminingAuthority(IPEA)underthePCT. This means that we can carry out all stages of assessing your PCT application.

Mind the stepsThe international phase consists of four main stages.

Stage one: application

• TheROassignstheapplicationafilingnumber.

• TheROcheckstheapplicationformistakesintheformalitiesoftheapplication.

• This part of the process usually takes one to two weeks.

Stage Two: searching

• An international search is carried out by the ISA to look for any relevant documents describing similar inventions related to the one you have claimed in your PCT application.

• ThefindingsofthesearcharecompiledinasearchreportcalledanISR.Anwrittenopinionisalso produced. The opinion is also known as an International Search Opinion (ISO)

• These reports are sent to your agent and the IB.

• Youcanamendyourclaims(underArticle19—seeInmoredepth)basedonthefindingsofyourISRandISO–amendmentsmustbemadewithintwomonthsofIPAustraliaissuingtheISRandISOorwithin16monthsoftheearliestprioritydatewhicheverislater.

• AsaPCTrequirement,theISRandISOshouldbeissuedwithinthreemonthsoftheapplication’s lodgment date, or nine months of the earliest priority date, whichever is later.

• Within 19 months of the priority date, you can ask for a Supplementary International Search (SIS) to be done in addition to the search carried out by your ‘usual’ International Searching Authority (ISA). At the moment there are six Supplementary International Search Authorities (SISA):Russia;theNordicPatentInstitute;Sweden;Finland;theEuropeanPatentOffice;andAustria.Australiadoesnotofferthisservice.EachSISAsetsitsownfeesanddecidesthescope of the searches it offers.

A guide to applying for your patents overseas 9

Stage Three: the application is published by the IB

• 18monthsfromtheearliestprioritydate,theIBpublishestheapplicationandtheISR.

• There is no provision for delay in publishing the application — it can be published without the completedISRifnecessary.

• At this point, if the applicant wishes to avoid or postpone publication, a notice of withdrawal of the PCT application, or of the priority claim, must reach the IB before the completion of the technical preparations for international publication — this must be done no later than 15 working days before it is due to be published.

• At30monthsfromtheearliestprioritydatetheIBusestheISOtoestablishtheIPRP(ChapterI),whichisavailabletoalloffices,iftheapplicanthasnotoptedforanIPE.

Stage four: optional

• AnInternationalPreliminaryExamination(IPE)isrequested

• YoucanrequestanoptionalIPEoftheapplication—thisrequestiscalledaDemandandshouldbefiledwithin22monthsoftheearliestprioritydate.

• TheIPEisbasedontheISOandanyamendmentsyoufileandhelpsyourefineyourapplication before you decide to proceed with the national phase.

• IfyouhaverequestedanIPE,andtheinternationalpreliminaryexaminerconsidersthattherearestilldeficienciesinyourapplication,youwillbegivenanInternationalPreliminaryExaminationOpinion(IPEO);otherwisetheexaminerwillestablishanIPRP(ChapterII).

• TheIPEO,liketheISO,explainswhydocumentshavebeencitedandalertsyoutoanyproblems your application may have in relation to novelty, inventiveness and industrial applicability,aswellastoanyproblemsofclarityinyourspecification.

• Youcanfileamendmentstoyourapplication(underArticle34—seetheInmoredepthsectionofthisguide)atthetimeoffilingthedDemandorinresponsetoanIPEOanytimeuptotheestablishmentoftheIPRP(ChapterII).

• Theexaminermust,inanyevent,establishtheIPRP(ChapterII)by28monthsaftertheearliestprioritydate.Thiswillbeanadversereportifyouhavenotovercomealldeficiencies.

Please note: the decision on granting a patent remains the task of the national or regional offices where you enter the national phase. The IPRP (Chapter II) is authoritative but it is not binding in these offices.!

A guide to applying for your patents overseas 10

AmendingyourPCTspecificationduringtheinternational phaseYouareabletoamendyourPCTspecificationatthreepointsduringtheinternationalphaseof the process.

RequeststocorrectapplicationerrorsCorrectionsofobviouserrorsinthespecificationcanberequestedatanystageupuntilentryintothenational phase. An obvious error is one where both the error and the correction are obvious on the face of the documents. We may require you to provide correction if your application does not meet formality requirements.

Article 19 amendmentsYouhavetwomonthsfromthedateofmailingoftheISRor16monthsfromtheearliestprioritydate,whichever is later, in which to lodge amendments to the claims under Article 19. Article 19 amendments MUST be sent directly to the IB.

Article 34 amendmentsAspartoftheIPEprocessyoucanalsorequestanamendmentunderArticle34ofthePCT. TheamendmentcanbetoanypartofthePCTspecification.Theseamendmentsshouldbesenttous.An examiner will consider the amendments during the examination.

UnderthePCTsystem,oncetheIPRP(ChapterII)isissued,nofurtheramendmentofthePCTspecificationisallowed.Thus,anyfurtheramendmentstothespecificationmustoccurafterthespecificationhasenteredthenationalphasewitheachoftherelevantnationaloffices.

Changes of name or assignments of the application or changes to the address for service can be made during the international process provided the request is received by the IB within 30 months from the earliest priority date.

A guide to applying for your patents overseas 11

The national phaseUsually by the end of 30 months from the priority date, you will have to ask for the PCT application to proceed separately as a standard patent application in the countries that have been selected by you for patent protection. As the applicant, you need to take certain actions in order for the application to enter the national phase and these actions must be completed before the relevant deadline. Most countries allow 30 months from the priority date in which to enter the national phase, although some, like Australia, allow 31 months. A small number of countries still require you to request entry to the national phase before20monthsfromtheprioritydateunlessyouhavefiledademand(request)foranIPEthatwaslodged within 19 months of your priority date.

You should check the timing requirements of each individual country for entering the national phase.

For further information please visit WIPO’s website.

Toproceedinthenationalphaseyoumustindicatetoeachofficethatyouareenteringthenationalphaseinthatcountry.Youarerequiredtopaythenecessarynationalfeestothoseofficesandsupplyanytranslationsthatmayberequired.Thenationalofficeswillexaminetheapplicationundertheirdomesticlaw and grant or refuse a patent, according to their own national patent law.

Youdonothavetoenterthenationalphaseinallcountries.Youshouldusethetimebetweenfilingandnational phase entry to check the commercial importance of your application.

We cannot advise you whether you should enter the national phase in any particular country.

Most countries will require you to provide either an address for service or the name of an IP professional registered in that country on national phase entry. We require an address for service in Australia, where legal documents can be served personally or received by post.

RequirementstoenterthenationalphaseTo enter the national phase in Australia you can:

• apply online by completing an application form and paying the applicable fee through eServices.

• write to us requesting entry of your PCT application (quoting your PCT application number) and pay the required fee.

• provideanaddressforlegalserviceinAustralia(thiscanbeaPostOfficeBoxinAustralia).

• ifthePCTapplicationisinalanguageotherthanEnglish,youmustprovideanEnglishtranslationofthePCTspecification.

• if you wish to enter the national phase before IP Australia has received the PCT published specificationyouwillneedtoprovidethefollowinginadditiontotheabove:

• acopyofthePCTspecificationaslodgedwiththeRO(withatranslationifnecessary).

• acopyofthecompletedrequestformlodgedwiththeRO.

!

A guide to applying for your patents overseas 12

Searches

International-type searches: Article 15(5)IfyouhavefiledanAustralianprovisionalapplicationyoucangetapatentabilitysearchcarriedoutbyusonyourinventionbeforeyoufileaPCTapplication.Thisiscalledaninternational-typesearchoranArticle 15 (5) search. It is designed to assist you to decide at an early stage whether you should seek protection through the PCT route.

An international-type search is essentially similar to a PCT international search and similar conditions apply. The search is made on the basis of claims, the description or a search statement. If your application has no claims, the international-type search is based on the description (and drawings). Wewillaskyoutoprovideuswithanindicationofwhatyouwouldlikesearched,ifthesubjectofthesearch is not readily apparent. This type of search is necessarily limited because the inventive concept maynotbeclearlydefined.Afterhavinganinternational-typesearchcarriedout,youmaydecidetofileeither a national or a PCT application. Alternatively you may decide not to proceed and your provisional application will lapse and will not be published.

Youmustaskustoperformaninternational-typesearchwithin10monthsoffilingyourprovisionalapplication.Thiswillensureyouhavesufficienttimetoconsiderthesearchresultsbeforethe12monthpriority period expires. You should receive your international-type search report about six weeks after you pay the fees and ask us to conduct the search. The report is prepared in a similar format to a PCT InternationalSearchReportandwrittenopinion.

WhenyoufileyourPCTapplicationyoumustpaythefullinternationalsearchfee.Howeverifwehaveconducted an international-type search for you for the same invention you may request a partial refund of the international search fee. The amount of the refund will depend on how much additional searching the examiner will need to do on your PCT application.

A guide to applying for your patents overseas 13

In more depth

Internationalsearchreport(ISR)SoonafteryoupaythefeesandfileaPCTapplicationwithusitwillbeforwardedtoanexaminationsection in the relevant technology and allocated to an examiner to conduct an international search. The search examiner will carry out a comprehensive search of the PCT minimum documentation which includesnational,regionalandPCTpatentdocumentspublishedafter1920fromallmajorcountriesand certain non-patent literature. Search examiners employ a range of tools and techniques to access patent and non-patent databases to identify those documents that are most relevant to the patentability of your claims. It is therefore vitally important that your claims are focused on what you consider to be the essentialfeaturesofyourinvention.AnexampleofanISRisshownonpage 16.

Boxes A and B indicate the technology areas, databases searched and the keyword strategies that were used by the examiner in performing the search. This information is provided for users of the search report tounderstandthescopeoftheinternationalsearch.Ithelpsnationalofficestoascertaintherelevanceofthe search during national examination when the claims are possibly in amended form.

BoxCidentifiesthemostrelevantdocumentsfoundbythesearchexaminerandindicatestheirrelevanceto the claims in the application.

• themiddlecolumnidentifiesthepublicationdetailsforeachdocument,includingthenameofthe applicant or patentee and the publication date.

• the column on the left indicates a category for the cited document by means of a letter (whose significanceisexplainedindetailinaboxunderneathBoxC).Forexample,theXcategoryindicates that the document alone raises doubt about the novelty and/or inventiveness of the invention.

• hecolumnontherightidentifiesclaimsforwhichthecategoryindicationisrelevant.AnAnnextotheISRlistsknown‘familymembers’ofthecitationsthatareidentifiedinthesearchreport.Family members are related applications in other countries made by the applicant of the citation for the same or closely related inventions.

TheISRmayalsocontainotherimportantinformationdependingonthecircumstances.Forexampleit may indicate that the application claims several different inventions (called lack of unity) and if so which of these inventions are covered by the search report. If you have several inventions within your application that cannot be covered by a single search, you will be given an opportunity to have those inventions searched on payment of extra fees. The search report may also show that some claims have notbeensearchedbecausetheyarenotregardedascoveringpatentablesubjectmatterorwhereameaningful search is not possible because it is impossible to work out what the invention is. However, a search is done when practicable.

TheISRthusidentifiesanyrelevantcitationsatanearlystageduringthepatentingprocess,allowingyouto assess the commercial worth of your invention and helping you in the process of making important decisions.

Copies of patent citations can be purchased from us or alternatively accessed via the internet from the relevantpatentofficesite.

A guide to applying for your patents overseas 14

Written opinion of the international searching authorityAfter completing the search, the examiner will also perform an examination and produce an International SearchOpinion(ISO)thatexplainswhydocumentshavebeencitedintheISRandalertsyoutoanyproblems your application may have in relation to novelty, inventiveness and industrial applicability, as wellastoanyproblemsofclarityinyourapplication’sspecificationanddescription.AnexampleofanISO is shown on page 17.

Box V of the ISO indicates which claims satisfy the criteria of novelty, inventive step and industrial applicabilityandwhichclaimsdonot.ItprovidesanexplanationofthedocumentscitedintheISRandtheir relevance to the invention. An adverse observation under novelty and/or inventive step would indicate that the examiner considers that the invention as claimed is not new or is non-inventive or obvious in the light of the citations and/or the knowledge which skilled persons in the relevant technology would possess.

In the example, the examiner considers that claims 1-6, 9 and 10 are not novel and the explanation indicates where the features of the invention have been disclosed in the citations. The examiner also considers that claims 1-7 and 9-11 lack an inventive step. The report explains that all the features of those claims are either disclosed in the documents cited or are minor features, which are not enough to make those claims inventive. The report also indicates that the examiner considers that the remaining claim, that is claim 8, is novel and inventive.

TheexaminerwillestablishtheISRandISOandwillsendthemtoyou.Youthenhaveanumber of options:

1. Take no further action until you need to enter the national phase. The ISO will be used by the IBtoestablishtheIPRP(ChapterI)andmakeitavailabletoalldesignatedofficesat30monthsfromearliestprioritydateifyoudonotoptforIPE.PriortoestablishingtheIPRP(ChapterI),theISOwillbeconfidential.

2. Provide written comments to the IB. These comments (including translations if required) will be availabletoalldesignatedofficesunlessanIPRP(ChapterII)hasbeenoristobeestablished.These comments would also be made available to the public but not before the expiration of 30 months from the priority date.

3. FileaDemandforIPE.Thedemandmustbefiledwithin22monthsoftheprioritydateorthreemonthsfromthedateoftheISR,whicheverislater.WhenfilingtheDemandyoumayalsomakechangestoyourspecificationandprovidesubmissionstotheexaminerexplainingwhyyour invention is new and inventive.

Article 19 amendmentsAfteryouhavereceivedtheISRandbeforetheapplicationispublished,thePCTprocessprovidesyouwith an opportunity to amend the claims of your international application under Article 19 of the PCT.

Forexample,ifthereareXorYcategorydocumentscitedintheISR,youmaywishtoamendtheclaimsto distinguish them from the citations before proceeding with the application in the national phase. This may increase the likelihood of your application proceeding directly to grant, when your application enters the national phase.

A guide to applying for your patents overseas 15

Internationalpreliminaryexamination(IPE)andarticle34 amendmentsBeforeenteringthenationalphase,youcanchoosetohaveanIPEoftheapplicationdonebyIPAustraliainitscapacityasanIPEA.Thisalsogivesyoutheopportunity(underArticle34ofthePCT)toamendanypartofyourapplicationtoovercomeproblemsandhaveanexaminationreportIPRP(Chapter II) issued on the amended application before you enter the national phase in different countries.

AnIPEcommenceswhenyoufileaDemand,togetherwithanysubmissionsoramendmentsthatyouwouldliketomakeinresponsetotheISRandISO,andpaytheappropriatefee,withinatimeperiodthatendseither22monthsfromtheprioritydateor3monthsfromthedateyoureceivedtheISR(whicheverislater).PleasenotethatyoucannotfileaDemandafterthistimelimithaspassed.AnIPAustraliaexaminerwillexamineyourapplicationandmayissueoneormoreopinionsbeforetheIPRP(ChapterII)reportisissued.Youwillhavetheopportunitytofile(withincertaintimelimits)aresponsetoeachopinion, which may include submissions, or amendments or both.

AnexampleofanIPRP(ChapterII)(significantpartsonly)isshownintheexampleonpage 18. BoxVoftheIPRP(ChapterII)hasthesamemeaningasboxVoftheISO.

BoxVIIImakesotherrelevantobservationsinrelationtosignificantissueswhichmayimpactonthevalidity of any potential patent grant. In the example, the examiner considers that claim 10 should include afeaturethatisnecessaryfortheinventiontofunctionproperlyandthatafeaturedefinedinclaim15doesnotcorrespondtowhatisdescribedinthebodyofthespecification.

TheIPEopinion/reportmayalsocontainotherinformationsuchaswhethertherewereanyrestrictionsonthe scope of the examination or whether there are any other defects in the international application.

FormoredetailontheinterpretationofISRs,ISOsandIPRP(ChapterII),pleaserefertotheWIPOGuidelinesforInternationalSearchesandtheWIPOGuidelinesforIPE,whichyoucandownloadfromWIPO’s website.

Supplementary international search (SIS) The main international search by the ISA is intended to be a high quality product, but one of the main problemsinfindingrelevantpriorartisthatthenumberoflanguagesisconstantlyincreasing.Asaresultthere is an increasing risk of new citations being raised during the national phase once you have already incurredsignificantcosts.TheSISservicewasintroducedasawaytoreducethisrisk.

RequestinganSISisastrategicdecision,takenafterconsiderationof:

• the results of the main international search

• the commercial importance of the particular application

• theamountofpriorartintheparticulartechnicalfieldwhichisknowntobepublishedinalanguage in which the main ISA is not skilled.

It is up to you to decide whether it would be worthwhile to incur additional expense to get some extra information. Your request for a SIS must be given to the IB before 19 months from the priority date have passed.

AtthemomenttherearesixSupplementaryInternationalSearchAuthorities(SISA):Russia;theNordicPatentInstitute;Sweden;Finland;theEuropeanPatentOffice;andAustria.

We do not offer this service.

Some SISA specialise in searching in a particular language, while others offer a full search as if they wereconductinga‘normal’(main)internationalsearch.EachSISAsetsitsownfeesandeachSISAwillonly search one invention. You can ask for more than one SIS to be done on the same PCT application.

TheSISAwillproduceasupplementarysearchreportwhichisinthesameformatastheISR,butnotasupplementary written opinion. Please note that amendments made under Article 19 or Article 34 will not be taken into account by the SISA when preparing the SIS report

A guide to applying for your patents overseas 16

Example:InternationalSearchReport(ISR)

A guide to applying for your patents overseas 17

Example:WrittenOpinionoftheInternationalSearching Authority

A guide to applying for your patents overseas 18

Example:InternationalPreliminaryReport on Patentability

A guide to applying for your patents overseas 19

Flowchart of an international patent application

*Please note that from 1 April 2002 changes to the PCT rules extended the time for national phase entry to 30 months from the priority date (31 months for Australia and some other countries) irrespective of whether a demand hasbeenfiled.However,notallcountrieshave the change in place and you should seek advice about the countries where you request patent protection. For further information please visit the WIPO website

File the Priority application

Publication of the PCT application by the IB

Youcanfileademandfor an International

PreliminaryExamination

Amendments under Article 34 can be made

(these amendments should be made directly

to us)

The International PreliminaryExamining

Authority may issue additional written

opinions

EstablishmentofIPRP(Chapter II) by 28

months after the earliest priority date

Amendments may be made under the national

law of the relevant country

EstablishmentofIPRP(Chapter I) 30 months

after the earliest priority date, if no demand has

beenfiled

Apply to enter into the national phase of

selected national states

We issue an Australian Application

number upon entry into the national phase in

Australia

You may make amendments to Claims under Article 19 within two months of the date ofmailingofanISR

or 16 months from the earliest priority date

whichever is later (these amendments should be made directly to the IB)

You may request an International-type

Search on your AU priority application (also

known as an Article 15(5) Search)

File the PCT Application withtheRO(you

may withdraw your application at

any time)

An International Searching Authority

carries out an International Search and issues an International SearchReportandaWritten Opinion of the

International Searching Authority

A guide to applying for your patents overseas 20

Timeline of a PCT application

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

29

30

31

First Filing (eg Provisional) gives PRIORITYDATE and TImElINESTART

Foreign Filing decision period (12 months)

Convention or PCT application

Applicantmayfiletheirinternational application at any time within 12 months ofprioritydate–ORuseit

as the First Filing

DemandfiledifapplicantwishesInternationalPreliminaryExamination

International Preliminary ExaminationProcess(applicantmayfile

amendments)Final date for SIS to issue.

TimeforISRandwrittenopinion of the International Searching Authority to be established three months

ApplicanthastwomonthsfrommailingdateofISRor 16 months from priority date to amend claims – to WIPO

FinaldateforPCTApplicationtobefiled

30 month deadline to enter national phase in some countries *

31 month deadline to enter national phase in some countries (Australia)

PCTFEESTOBEPAID.AnapplicanthasonemonthfromfilingtopayPCT fees without penalty. A second month is available but a penalty fee applies.

InternationalApplicationpublishedbyWIPO.Requestfiledifapplicantwantsa Supplementary International Search (SIS)

Months

Please note that from 1 April 2002 changes to the PCT rules extended the time for national phase entry to 30 months from the priority date (31 months for Australia and some other countries) irrespective of whether a demandhasbeenfiled.However,notallcountrieshavethechangeinplaceandyoushouldseekadviceaboutthe countries where you request patent protection. For further information please visit the WIPO website.

A guide to applying for your patents overseas 21

A bit of adviceOur staff can answer general questions that you may have about the Australian patent and PCT systems.

Patent protection, particularly international protection, is expensive and you need to balance your required level of protection against the cost of that protection. It is a valuable investment as well as a significantexpenseandshouldbetreatedassuch.

Obtaining a commercially useful patent requires a high level of expertise and therefore we recommend that you seek professional help before seeking international patent protection.

If you do proceed without professional help you should bear in mind that your patent application is a legal document, and as such should be drafted carefully so that it can be upheld against legal challenge. You will also need to ensure that competitors cannot easily work around your patent and use your ideas without you having any legal recourse.

!

A guide to applying for your patents overseas 22

PCTonlineelectronicfilingWeoffertwoonlinemethodsforyoutofileyourPCTapplication,bothofwhichareprovidedbyWIPO.

ThepreferredoptionisePCT.AlternativelyyoumayusePCT-SAFE.

Onlineservicesareafaster,cheaperwaytofileinternationalpatentapplicationsunderthePCT.

PCTapplicationsfiledelectronicallyareeligibleforadiscountandcanbetransmittedtoWIPOfasterbecause there is no paper or postage involved. See fees for more information.

Onlineservicesalsoenableyoutofileyourinternationalpatentapplicationsatanytime.

Preparing your application with ePCTePCTisthepreferredchannelforfilingPCTapplicationsandassociatedrequests.

ePCT is a WIPO online system that allows registered users to upload electronic documents relating to an international application directly into the International Bureau’s (IB) processing system.

Using the ePCT system, you can submit online requests for different actions and view the most up-to-date bibliographic data and documents contained in the international application, including those that have not yet been published. It also gives registered users additional functionality to manage roles, portfoliosandreceivenotificationsinaccordancewiththeirPCTneedsandpreferences.

OtherbenefitsforusingtheePCTsysteminclude:

• the ability to maintain, monitor and review multiple PCT portfolios

• immediateallocationofaPCTapplicationnumberuponfiling

• areducedinternationalfilingfeeforanelectronicfiling

• access to up to date information on your application

• ability to allocate and manage roles and access to selected parties

• abilitytouploaddocumentsforconsiderationbytheprocessingoffice

• alinktoWIPO’sDigitalAccessService(DAS)andtheabilityfortheROtoobtainprioritydocumentsfromDAS

• no requirement for installation and maintenance of any software locally.

For more information on ePCT please refer to the WIPO website.

If you have any general enquiries regarding ePCT, please contact PCT@ipaustralia.gov.au.

A guide to applying for your patents overseas 23

PreparingyourapplicationwithPCT-SAFEAs an alternative to ePCT you can use WIPO’sPCT-SAFE.BeforeusingPCT-SAFEyouwillneedtogetthelatestversionofWIPO’sPCT-SAFEsoftwarepackageandadigitalcertificate.YoucandownloadthePCT-SAFEsoftwareandapplyforafreedigitalcertificatefromtheWIPO website. Alternatively, if you alreadyhaveanABN-DSCissuedundertheAustralianGovernment’sGatekeeperscheme,youcanusethiscertificate.

Toreceivethemaximumelectronicfilingdiscount,thetextofthedescription,claimsandabstractforyourapplicationmustbeinacharactercodedformat(e.g.Xml)andmustbelodgedusingourPCT Online service.YoucanobtaintheXmlspecificationforPCTdocumentsfromtheWIPOwebsite.YoucanuseWIPO’sPCT-SAFEeditortoprepareyourapplicationdocumentsinWIPO’sXmlformat.AlternativelyyoucanusePDFdocumentsanduploadthesetoPCT-SAFE.

Filing your application via PCT onlineOnceyouhavepreparedyourapplicationusingPCT-SAFEandsaveditasaWASP(.zg1)file,itisreadyfor submission through the online services section of IP Australia’s website.

Onceyouhaveuploadedyourfiles,theywillbecheckedforvirusesandthevalidityofyourdigitalsignature,andyouwillbepresentedwithyourpre-filingnumberandanelectroniclodgmentreceipt.

Filing your application via a hard copy formIf you have access to the internet, go to WIPO’s websiteanddownloadthePCT101Requestform.

IfyoudonothaveaccesstotheinternetyoucanrequestaPCT101Requestformbycontactingus.Theform will be sent to you free of charge. Completed forms should be returned to us.

A guide to applying for your patents overseas 24

FeesThe current list of PCT application fees is available on our website. Please note:

1. if an examiner determines that there is more than one invention claimed in an application you may be invited to pay additional fees.

2. feesarepayabletotheRO.WearetheROforAustralia.

3. althoughthefeesarenotrequiredtobepaidatthetimeoffilingtheinternationalapplication,theinternationalsearchwillnotbeperformeduntilthefeesarepaid.Ifnofees,orinsufficientfees,arepaidyouwillbeinvitedtopaythefeeswithinonemonthoffiling.Ifthefeesarenotpaidwithinthefirstmonth,asecondletterrequestingpayment,plusapenaltypayment(50% of the unpaid fee or the whole of the transmittal fee, whichever is greater, but not more than 50%oftheinternationalfilingfee)willbesenttoyou.Iffeesarenotpaidwithinthesecondmonth then the application will be withdrawn.

4. you will also need to pay various national fees in each country where you choose to begin the nationalphase.InAustraliathesewillincludefiling,examination,andmaintenancefees.

5. the Patents Act has various fees to be paid during the prosecution of an application.

6. failure to pay a fee can have serious consequences for the protection of your rights. If you choose to pursue patent protection without professional advice you should take extreme care to understand the fees you will be required to pay and when you are required to pay them.

Be vigilant – check all letters and invoicesAnyone can access information about your IP right/s, including your contact details, online. Some people may use this information to send letters and invoices to you requesting payment for IP services that you have not requested. They may send you an invoice, or offer to provide a service, such as:

• register or renew your IP right/s for a fee

• publish your patent or trade mark in an international register

• provide you with monitoring services for your IP right/s.See our website for a current list of companiesthatsendtheseunofficialinvoices,andforexamplesofthe invoices they send. The World Intellectual Property Organization (WIPO) website also contains a warning about these companies.

Before paying a fee for any IP-related service, we recommend you carefully consider what, if any, value the service will provide.

These companies are not associated with us, WIPO or its International Bureau. The services offered by these companies donotprovideofficialtrademarkregistrationortrademark rights in Australia or overseas.

A guide to applying for your patents overseas 25

Contact usOur staff will help you and answer your questions, however we cannot assist you on legal matters or provide business advice. You may wish to consult a Patent attorney. See our website for information about how to contact an IP professional.

WesubscribetotheTelephoneInterpreterService.IfyouneedhelpcommunicatinginEnglish,youcanphone the interpreter service on 131 450 for the cost of a local call from anywhere in Australia.

All written correspondence regarding your PCT application should be directed to:

Post The Commissioner of Patents IP Australia PO Box 200, Woden ACT 2606 Australia

Phone 1300 651 010 (withinAustralia); +61 2 6283 2999 (International callers only)

Website www.ipaustralia.gov.au - for comprehensive information relating to intellectual property, to access IP Australia’s eServices, and to download publications and other documents

Communicating electronically with usThe date you provide information to us can be critical to the certainty of your IP rights.

We haves implemented a set of ElectronicBusinessRules that mean that when you communicate with us electronically (e.g. online), using our preferred method, the date and time of that communication will beAustralianEasternStandard/DaylightSavingTime.

Our preferred means of communication is through eServices - you can register and log in on our website.

We provide these rules to outline the submission requirements for your IP, including:

• identifyingtheappropriatefileformatstosubmityourservicerequest

• providing a list of electronic payment options.

A guide to applying for your patents overseas 26

Privacy of personal informationWe are committed to handling personal information in accordance with our obligations under the Privacy Act 1988. Our Privacy Policy explains how we handle personal information, and is available on our website.

Customer service charterWe are committed to providing our customers with excellent customer service and high quality products and services. Our commitments are outlined in our Customer Service Charter, available on our website. We review our charter regularly and measure our compliance each quarter.

A guide to applying for your patents overseas 27

Contacting WIPOAddress International Bureau of WIPO

34 Chemin des Colombettes, 1211 Geneva 20 Switzerland

Phone (+41-22) 338 83 38 PCT Information Service (for general PCT enquiries)

(+41-22) 338 95 23 PCT-SAFE,ePCT&DAS(PCTe-Services)

Openinghoursfrom9:00–18:00CentralEuropeanTime

Email epct@wipo.int -PCTInformationService(forgeneralPCTenquiries),PCT-SAFE,ePCT&DAS(PCTe-Services).multilingualstaffarealwaysonhandtoansweryour questions via email

Website www.wipo.int/pct/en - for information and tools relating to the PCT

A guide to applying for your patents overseas 28

Glossary of terms

Address for Correspondence

An address in Australia where we can write to you. You should notify us if this address changes.

Address for service in Australia

An address for legal service, that is, an address in Australia where legal documents may be served. This can be a PO Box in Australia. You should notify us if the address changes.

Applicant The person(s) or organisation(s) making the application.

Article 19 amendment

An optional amendment that is applied to the claims of the PCT application. You should make these amendments directly to the IB after thereceiptoftheISR,andWOoftheISA.

Article 34 amendment

An optional amendment to the PCT application which can cover all documentsofthePCTapplication(excludingtheRequestform). Article 34 amendments happen during preliminary examination and should be sent to us.

Article(s) These are the clauses of the PCT that govern how the Treaty will operate.They equate to sections of an Act.

Contracting State A country that is a party to the PCT. Also called member states. For an up to date list of contracting States please see WIPO’s website.

Demand AnapplicationforIPE.ThisformisseparatefromthePCTRequest(orapplication) form.

Digital Certificate DigitalcertificatesarerequiredforensuringthevalidityandsecurityofPCTapplicationsfiledelectronically.ApplicantscanuseadigitalcertificateissuedbyWIPO(freeofcharge)ortheABN-DSCfortheirbusiness.

Elected office ThenationalpatentofficeorgovernmentbodyactingfortheelectedState.

Elected State AcountrythattheIBsendstheIPRP(ChapterII)toafterInternationalPreliminaryExamination.Yourdemandwillautomaticallyelectallthecountries that are signatory to the treaty on the date of your application.

ePCT WIPO’sfullyelectronicfilingandmanagementsystemfor PCT applications.

IB International Bureau of the World Intellectual Property Organization.

Infringement Infringement occurs when someone willingly or unwillingly uses your intellectual property without your permission.

International Search

A patentability search, not an infringement search, and accordingly should not be relied upon to identify patents which may be infringed by the claimed invention.

Inventor Anyone whose involvement and contribution was essential to the development of a new process, appliance, machine or article.

A guide to applying for your patents overseas 29

IPEA InternationalPreliminaryExaminingAuthorityconductstheInternationalPreliminaryExamination.

IPE InternationalPreliminaryExamination.

IPEO InternationalPreliminaryExaminationOpinion.TheInternationalPreliminary examiner may issue one or more written opinions before the InternationalPreliminaryReportonPatentability(ChapterII)isissued.

IPRP (Chapter II) InternationalPreliminaryReportonPatentability(ChapterII).Reporthelps you to assess the invention and decide whether or not to enter the nationalphaseineachofthedesignatedcountries.AfterreceivinganISRand Written Opinion of the ISA, you also have the opportunity to ask for a non-bindingpreliminaryexamination.Thiswillalertyoutoanysignificantproblems with your application.

ISO InternationalSearchOpinion.ItisissuedautomaticallywiththeISRandcoversallissuesunderIPE.WIPOreferstothisastheWrittenOpinionofthe Searching Authority (WOSA).

ISA International Searching Authority carries out the international search and Written Opinion of the ISA.

ISR InternationalSearchReportcontainsnocommentsonthevalueofyourinvention but lists citations of prior art relevant to the claims of your international patent application and gives an indication of the possible relevance of the citations to its patentability. This enables you to evaluate your chances of obtaining patents in the countries you have designated.

PCT Patent Cooperation Treaty.

PCT-EASY UsesfeaturesofthePCT-SAFEsoftwaretohelpyouprepareandfileyourPCTapplication.ThePCT-SAFEsoftwarecanbeoperatedinPCT-EASYmodewhereapplicationsarefiledonpaper,accompaniedbyrequestformdataandabstractondisketteorotherphysicalmedium(CD-R,DVD-R).This service will not be available after 30 June, 2015.

PCT-SAFE FreesoftwareprovidedbyWIPOtohelpyouprepareandfileyourPCTapplication. It is designed to simplify the process, save you time and provide you with cost savings.

PCT-SAFE editor FreesoftwareprovidedbyWIPOtohelpyoupreparethespecificationsforyourPCTapplicationinWIPO’spreferredXmlformat.ThemaximumelectronicfilingdiscountwillapplytoapplicationsfiledelectronicallywithXmlspecifications.

PCT online IP Australia’s electronic lodgement facility for PCT applications, which can be accessed from the online service section of the IP Australia website. To usePCTOnlineyouwillneedthePCT-SAFEsoftwarefromWIPOandadigitalcertificate.

Request An application form for the PCT.

RO TheReceivingOffice-thenationalofficewheretheinternationalapplicationisfiledthencheckedandprocessed.Theoriginaloftheapplication is sent to the IB of WIPO and a copy to the ISA who will conduct the international search.

RO/AU TheReceivingOfficeinAustraliaisIPAustralia.

Rule(s) The PCT term that refers to the details of the Treaty. They are similar to whatarecalledRegulationsinAustralia.

SIS Supplementary International Search is a search performed by an ISA other thantheISAthatproducedtheISR.TheSISmaylistcitationsthatdonotappearintheInternationalSearchReport(ISR).TheSISisanoptionalservice and allows you an opportunity to have documents that may not havebeenfoundandlistedintheISRtobelocatedbeforenationalphaseentry.

SISA Supplementary International Search Authority carries out the Supplementary International Search

WIPO World Intellectual Property Organization, based in Geneva, Switzerland.

WOISA Written Opinion of the International Searching Authority.

www.ipaustralia.gov.au

© Commonwealth of Australia 2014