International filing strategies

International-filing-strategies-photo

John Walker Attorney and Principal, Dennemeyer & Associates reviews the benefits and processes for filing a PCT application in Australia.

Australia is a major player in many industries with many Australian companies recognized as world leaders; industries include mining and resources, energy, agricultural and food, medical devices, pharmaceuticals, and telecommunications and software. Australia ranks highly in any international patent comparisons and ranked number 14 for Patent Cooperation Treaty (PCT) National Phase Entries in 2012. Interestingly, around 90% of all Australian applications are from non-residents. All of these factors point to Australia being a country where one should, as part of an international filing strategy, consider patent protection. The following information outlines the key areas for non-Australian entities which may be considering filing a patent in Australia via PCT National Phase Entry.

Application
In Australia, the deadline for National Phase Entry is 31 months from the earliest priority date. If the PCT application is in a language other than English, then a verified copy of the translation must be lodged at the time of filing. Further, no Power of Attorney is required and there are no declarations that need to be signed by the inventors. The cost of entering National Phase in Australia, including official fees, is around AUD1000.

Request for examination
Examination for patents is not automatic and must be requested within 5 years of the application date. For national phase entries of PCT applications, the application date is the international filing date. However, it is more common for IP Australia to issue a Direction to Request Examination. This normally issues 12-18 months after national phase entry, and the applicant has a 2-month period from the Direction in which to request examination Examination may also be requested earlier if the applicant so requires. The cost of requesting examination, including official fees, is around AUD800. Request a free trial to read more.