International Patenting for Australian Patent Applicants (as at 23 February 2015)
1.1 There are several courses of action possible for pursuing international patent protection made possible by virtue of several international agreements to which Australia is a party. In general, these agreements, administered by the World Intellectual Property Organisation (WIPO), an arm of the United Nations, allow the filing of patent applications to be delayed, but claim “priority” from one or more applications filed in a “home” country. Accordingly, an Australian Patent Application may be relied upon, within certain time limits, for securing overseas patent protection. I discuss the alternative courses below, followed by a discussion of regional patenting organisations.
2. International Patent Application under the Patent Co-Operation Treaty (PCT) (as at 28 August 2013)
2.1 The course of action that I normally recommend is to file an International Patent Application under the Patent Co-operation Treaty (PCT) automatically covering all “contracting states” (PCT countries and regional patenting organisations). The contracting states of the PCT are given in the column headed “PCT” in the Patent Gazetteer as at the date indicated on the Gazetteer. An International Patent Application may claim priority from an earlier application, such as an Australian Provisional Patent Application, by virtue of the Paris Convention (discussed later in this page). An international patent application may be prepared and filed at the Australian Patent Office so long as one applicant or inventor has an Australian address. Typical Australian patent attorney charges for preparing a complete specification and filing a PCT Application would be of the order of AU$10,000 to AU$12,000, not including the cost of drafting a patent specification because, in most cases, a PCT application is based on an earlier filed application prepared by a patent attorney.
2.2 Please note that there is no such thing as a “World Patent” or the like. The main advantages of a PCT Application are firstly that it provides a mechanism for delaying national filing costs and secondly that it provides feedback as to the patentability of the invention.
2.3 An International Patent Application (PCT Application) has two phases: the International Phase and the National Phase.
2.4 International Phase
2.4.1 If an International Patent Application is filed in Australia, the International Phase is conducted before the Australian Patent Office as both the “Receiving Office” and the “International Searching Authority”. During the international phase, an International Search Report (ISR) is issued with an International Preliminary Report on Patentability under Chapter I of the PCT (IPRP1), being a written opinion of the International Searching Authority on the patentability of the invention defined by the claims. On the basis of the results of the ISR and IPRP1, an applicant should be able to gauge the likely strength of patent protection that could be expected to be granted before incurring the cost of filing national phase entry applications. Amendments may be made to the claims of the application under Article 19 of the PCT responsive to the ISR and must be filed within the timeframes set by the PCT.
2.4.2 Examination of the international application may be undertaken by filing a “Demand” for international preliminary examination at the Australian Patent Office which acts as the “International Preliminary Examining Authority”. Amendments may be made to the description and the claims under Article 34 responsive to the IPRP1 if International Preliminary Examination (IPE) is requested on or before 22 months from the earliest priority date. The cost of filing the Demand is typically about AU$2,500. IPE is prosecuted in the International Phase in a similar way to that of a national patent application. Amendments and argument may be filed at the Australian Patent Office, along with the amendments responsive to the IPRP1 mentioned above, and normally would add from AU$800 to AU$1,600 to the cost of IPE. This process may result in a Written Opinion on Patenability (“Opinion”), and the process of amendment and argument may continue until the issuance of an International Preliminary Examination Report on Patentability under Chapter II of the PCT (IPRP2). The IPRP2 must be established by 28 months from the earliest priorty date and terminates prosecution in the International Phase. The aim of such an exercise is to place the claims into a better condition regarding novelty and inventive step for entry into the National Phase with claims amended having regard to prior art revealed by the ISR and the comments made by the Examiner during IPE. Amendments (if any) made at the issuance of the IPRP2 are normally circulated to the designated states which have not deposited a declaration stating such amendments are not required to be circulated to them. Moreover, there are several contracting states which will accept that the application meets novelty, inventive step and industrial applicability requirements according to their local law without further examination if a favourable IPRP2 is established in the International Phase.
2.5 National Phase
2.5.1 The normal national phase entry date is 30 or 31 months from the earliest priority date for most countries. However, Luxembourg, Tanzania and Uganda retain a 20- or 21-month national phase due date unless IPE is requested on or before 19 months from the earliest priority date. The National Phase involves the filing of documents necessary to “enter” the national or regional patent phase in selected jurisdictions which are effective members of the PCT.
2.5.2 As an approximate guide, the cost of national phase applications are of the order of AU$5,000.00 to AU$8,000.00 for each English speaking country (excepting regional applications) and about AU$6,000 to AU$9,000 for each non-English speaking country. These costs may vary depending largely upon the complexity of the invention, length of the patent specification, attorney’s and translation costs, exchange rates, and the like. There are some countries which are considerably more expensive to others. Regional applications such as for Europe, Eurasia and Africa may also be filed, and these are discussed below. Australian Patent Attorneys are usually amenable to providing more accurate cost estimates for specific countries or regions upon request. Of course, for countries which are not signatories to the PCT, applications under the Paris Convention may be pursued within the same time limits by which the PCT Application would have to be filed, or non-Convention applications may be filed depending on whether the invention may still be validly protected according to foreign local law.
3. Convention Applications
3.1 The main alternative to the PCT is made possible by virtue of the Paris Convention of 20 March 1883. Member countries are listed under the relevant heading in the General Gazetteer. The Convention applies for countries which are members of the International Union for the Protection of Industrial Property (Convention Countries), and provides that Convention applications may be filed up to twelve months from the date of filing a patent application for the same invention in one Convention country, and still retain the filing date of that application as a priority date in the remaining Convention countries. Thus, if you have an Australian Patent Application, you may file applications in any one or more Convention Countries claiming the Australian filing date as a priority date provided all of the filing requirements are met within twelve months. In this respect, please refer to the General Guidelines below. Australia also has other arrangements, such as bilateral agreements, reciprocity through the World Trade Organisation (WTO), or “inter-imperial” arrangements, which provide an equivalent 12-month priority period whereby an Australian filing date may be used as a priority date. The Patent Gazetteer this gives an indication of which countries may be treated as Convention Countries.
3.2 In addition to the above, regional patent organisations for Europe, Eurasia and Africa are effectively members of the Paris Convention. Accordingly, regional patent applications may be pursued in regional patent offices claiming a right of priority under the Paris Convention. Regional patent organisations are discussed later in this page. Since it has been a prerequisite for all PCT countries to be Convention Countries, an International Patent Application under the PCT may claim a right of priority under the Paris Convention, but the PCT now provides that membership of the WTO is sufficient to claim priority.
3.3 Costs for filing Convention applications would be similar to that outlined above for national phase patent applications in most cases, however, but some countries have additional formal requirements for Convention applications which are not required for national phase entry. thereby having an upward influence on filing costs. Some non-PCT countries have been found to cost up to AU$10,000, particularly where translations are required.
3.4 Although the initial costs are delayed by up to twelve months, the high cost burden still occurs within the Convention period, and there is no feed-back on patentability of the invention until prosecution of at least one of the applications commences. Thus, it can be seen that the PCT route would be preferred to reliance on the Convention route alone in most cases.
4. Individual Countries
4.1 Individual Patent Applications may be filed immediately in separate foreign countries or regional patent offices at the typical costs given above for applications filed in respect of the PCT National Phase and for Convention Countries. If this course of action were to be adopted, I would suggest having a search conducted to ascertain whether the invention is novel and likely to result in the successful grant of patents, and at the same time to assess the likelihood as to whether the manufacture or use of the invention would infringe existing rights.
4.2 There are searching agencies which specialise in patent searching. Alternatively, applicants requiring prior art searches may request the Australian Patent Office to conduct an “international-type” search on an Australian patent application. If you already have an Australian Provisional Patent Application, then the international-type search request may be based upon that application. The request costs about AU$3,000 to AU$3,500 from most Australian Patent Attorney firms. The search results are usually made available within four to five weeks and typical Patent Attorney charges range between AU$350 and AU$550 for receiving, and reporting on the search results with the cited references and brief comments thereon. If you require an Australian Provisional Patent Application, typical Attorney charges for preparing and filing a typical application range from AU$4,000 to AU$5,000. Specifications involving complex subject-matter or an invention which is difficult to define may cost more. If a PCT Application is filed where there has been a prior “international type” search, up to 85% of the official search fees may be refunded.
4.3 Most patent attorney firms will conduct patent searches, either using their in-house searching capability or outsourcing to a specialised patent searching agency. I would suggest that instructing a patent attorney is preferable to instructing a specialized searching agency because the results of searches are protected by client privilege.
4.4 The main disadvantage associated with simultaneous multiple-country filings is that there is a relatively high initial cost associated with filing the applications, particularly if a large number of countries is involved. Moreover, there is no feedback at an official level until nearly all of the applications are under prosecution as to the likely scope of protection which may be obtained.
5. Regional Patenting
5.1 There are four well established regional patenting organisations covering several geographically or politically associated countries, namely, the European Patent Organisation (EPO), the Eurasian Patent Organisation (EAPO), the African Intellectual Property Organisation (OAPI) and the African Regional Industrial Property Organisation (ARIPO). A fifth regional patent organisation has been established in the Middle East by virtue of the Gulf Co-operation Council, and a sixth is developing amongst some Latin American countries.
5.2. European Patent Applications as at 10 July 2013
5.2.1 The European Patents Convention (EPC) establishes the European Patent Organization through which it is possible to file a single patent application at the European Patent Office (EPO) designating any one or more of the member countries. Member countries of the EPC are indicated by the two-letter code EP in the fifth column of the Patent Gazetteer. The official list can be viewed on the European Patent Office website.
5.2.2 The cost of filing a European application designating all available countries is typically of the order of AU$12,000 to AU$16,000 using an Australian Patent Attorney. However, designation fees are payable for six countries only. The estimated filing cost may be reduced by approximately AU$200.00 for each country less than six not designated.
5.2.3 A European Patent Application is prosecuted as a single application in the English language, with translations of the claims into French and German only being required during the formal procedures for the grant of a European Patent. The European Patent may then be validated in selected designated countries by completing formalities, such as the preparation of translations of the whole (or remainder of) the specification into various local languages in the desired designated countries. National validation costs are slightly less than the costs of filing a national application for some countries, or involve a nominal fee for merely providing an address for service in other countries. As at July 2013, validation for all designated states is estimated at AU$100,000.00. Cost savings may be made when validating in several countries having common languages. The “London Agreement”, which removes the requirement for translation of the patent specification, is having a downward influence on national validation costs as more countries adopt the agreement. However, it is unlikely that Spain and Italy will ever validate the London Agreement. Moreover, the European Union has concluded an agreement with the European Patent Organisation which will soon allow a single enforceable regional patent covering most countries of the European Union, being a subset of the countries which belong to the Equopean Patent Convention.
5.2.4 The main advantage of a European patent application over individual applications in separate countries is cost. The European patent application attracts a single sequence of prosecution costs compared with separate prosecution costs for proceeding in individual countries, and there is a single renewal fee until national validation. Also, the application may be prosecuted in the English language. A further advantage is that the patents ultimately validated and effective in the designated countries are identical in terms of scope of protection whereas individually prosecuted applications may result in national patents of somewhat different scope.
5.2.5 If a PCT Application is filed, all current European countries belonging to the European Patent Convention may be covered by a single designation. It should be noted that Belgium, Cyprus, France, Greece, Ireland, Italy, Monaco, Malta, Netherlands and Slovenia may only be pursued via a European designation under the PCT.
5.2.6 Bosnia and Herzegovina, and Montenegro have concluded separate agreements with the EPC for extending European Patents into each respective country even though they are not members of the EPC. A European Patent obtained via the PCT route may be registered in these “extension” countries after it has been granted, but only in such extension countries that were designated in the PCT application.
5.3. African Regional Patent Applications as at 8 June 2011
5.3.1 There are two regional patenting entities, together covering about half the territory of Africa.
5.3.2 The more developed one is the African Intellectual Property Organisation (OAPI) comprised largely of Francophone African countries. For patent, utility model, trade mark and design registration purposes these countries have effectively formed a single entity. Designation of individual member countries is not possible since the territorial application of an OAPI patent extends to all member countries.
5.3.3 The member countries of OAPI are indicated in the Patent Gazetteer by the two-letter code OA in the fifth column of the Patent Gazetteer. All of the OAPI members are signatories of the PCT. The typical cost of an OAPI application is of the order of AU$10,000, and is prosecuted in either English or French.
5.3.4 The second African regional organisation is the African Regional Industrial Property Organisation (ARIPO), comprised largely of Anglophone African countries. Selected member countries may be designated in an ARIPO application lodged in the patent office of any member country, and once successfully prosecuted and granted an ARIPO patent is automatically registered in member countries which have not rejected the application according to their local patent law within six months from grant of the ARIPO patent. Some ARIPO countries have provisions for independent registration of patents under ARIPO may also be designated under the PCT, however, only some ARIPO countries are effective PCT countries. If patent protection is required in non-PCT ARIPO countries, a separate ARIPO application, or separate national patent applications are required. Additionally, the national route for Swaziland has been closed for PCT applications, and thus, protection in that country may be pursued only by way of an ARIPO patent application. ARIPO members are indicated in the Patent Gazetteer by the two-letter code AP in the fifth column of the Patent Gazetteer.
5.3.5 The cost of an ARIPO application typically is of the order of $5,500, and is prosecuted in the English language.
5.4. Eurasian Patent Application as at 8 June 2011
5.4.1 The Eurasian Patent Convention (EAPC) establishes the Eurasian Patent Office (EAPO) in Moscow. A Eurasian Patent would cover most of the territory of the Commonwealth of Independent States which emerged from the former Soviet Union. It is also possible to designate the EAPO in an International Patent Application under the PCT. The countries which have ratified or acceded to the EAPC are indicated in the "Region" column of the Patent Gazetteer by the two-letter code EA in the fifth column of the Patent Gazetteer.
5.4.2 An EAPC application is filed and prosecuted at the EAPO in the Russian language and applies to all countries which have ratified the convention, and individual countries cannot be selected. A typical EAPC application is in the order of AU$11,000 for filing. A granted EAPC patent is evaluated under special regulations of the EAPC insofar as infringement and validity are concerned, and not under the laws of the member countries.
5.5. Gulf Co-operation Council as at 8 June 2011
5.5.1 The Gulf Co-operation Council (GCC) was established in 1989 for the economic co-operation of Arab States comprising Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and United Arab Emirates. In 1993, the GCC passed a law for the granting of patents with effect throughout the GCC. The GCC is also promulgating amendments to permit the GCC to comply with the TRIPS agreement as a forerunner to joining the PCT. At present, all GCC members except Kuwait are members of the PCT.
5.5.2 Applications are filed and prosecuted in the Arabic language before the GCC Patent Office in Riyadh, Saudi Arabia, which is a separate office from the Saudi Arabian Patent Office. A GCC Patent cannot co-exist with a national application in any of the member states. A national application must be relinquished within 90 days of filing the GCC Patent Application. The members of the GCC are indicated in the attached Gazetteer by the code GC in the fifth column of the Patent Gazetteer.
6. General Guidelines
6.1 The above information has been prepared from several sources, and every reasonable effort has been made to ensure accuracy. Costs will vary between different Patent Attorney firms as well as with foreign exchange rate fluctuations and changes in government fees and associates’ charges. The information is of a general nature only and is not to be taken as advice for any particular circumstance. I do not accept any liability for any errors or omissions, and specific advice should be sought from a competent legal professional for your particular requirements. Up-to-date information is available from many sources including the internet. The WIPO home page at http://www.wipo.int is recommended and has links to many other resources.
6.2 A PCT application automatically designates all countries. If foreign protection is to be sought in less than three or four PCT countries then the advantages of the PCT route may not outweigh what may be an additional bottom-line cost in ultimately obtaining patent protection. If foreign patent protection is to be sought only in non-PCT or less than, say, three PCT countries, (other than regional entities) then the Convention route may be relied upon. Furthermore, since an Australian Patent Application is not normally published for at least eighteen months, there is no immediate need to file applications in non-Convention countries so long as the invention is not patented, commercialised or published anywhere or in any way prior to applying for patent protection in such countries. Please note that some countries require filing of a local application within twelve months of filing an application in any other country irrespective of Convention membership and non-publication.
6.3 The cost estimates above may serve as a general guide only and considerable variation would be expected from different patent attorneys and for complex cases and cases which do not follow a straightforward application process. Most Australian Patent Attorney firms have established their own competitive scales of charges. In my experience, all Australian Registered Patent Attorneys provide a very high standard of service and nearly all firms have a world-wide network of associates. Most attorneys require remittance of at least a retainer with instructions received a minimum of one month prior to filing foreign cases. Please note that there may be considerable cost penalties for late remittance or late instructions. Moreover, for late instructions or payment, most firms cannot guarantee meeting filing dates, whether for Convention applications, national phase applications, national registrations or any other requirement necessary to keep a case alive.
6.4 Many countries have onerous formality provisions, and as such, procedures relating to notarisation, authentication and legalization of forms, the preparation of formal drawings or the provision of extra translations or extra information or tallages may increase costs and/or cause delays. Furthermore, I have found that cost estimations from some countries can be unreliable.
6.5 It should also be appreciated that the filing of a patent application begins a process of prosecution which typically involves a cost of three to five times the application cost over the prosecution period. The prosecution period varies from one (1) to three (3) years, though prosecution may commence at any time from filing to seven (7) years from filing. If difficulties are encountered, there can be a considerable expansion in prosecution costs and dilation of the prosecution period.
6.6 Issue fees for an application once granted where applicable are typically between 10% and 50% of application cost. The EPC and OAPI have relatively involved grant procedures. Typically, grant costs are approximately AU$7,500.00 for the EPC and approximately AU$4,000.00 for OAPI and ARIPO. Additionally, renewal fees or annuities are payable in most countries over the life of a patent or patent application, and are typically between 5% and 80% of the application cost.
7. Current Events (as at 23 February 2015)
7.1 The information following has been prepared from information received, and so responsibility cannot be accepted as to its accuracy or currency.
7.2 Sudanese intellectual property rights are not recognized in the newly independent country of South Sudan, and no news has been received concerning the promulgation of intellectual property laws in South Sudan.
7.3 There has been a considerable escalation in prosecution costs over the last several years, even though filing costs have escalated somewhat more moderately. There used to be a rule of thumb that intellectual property budgets should set a figure about the same as the filing cost for the prosecution of applications over the prosecution period, which is normally from one to two years. However, it is now the case that at least three times the filing cost is incurred over the prosecution period, particularly in the United States, and European patent prosecution costs are typically slightly more than the United States.
7.5 The above information is intended as a preliminary guide only. In order to plan a course of action suitable to an applicant’s particular requirements, specific advice should be sought from a competent legal professional.
Copyright © 2015 Bill Anderson