Many clients request worldwide patent protection and while theoretically this might be possible, for example by filing a patent application in every country or region that has a patent system, this is not a cost-effective option for many Applicants.
Some confusion may have occurred because Applicants may have heard of an ‘International patent application’, also referred to as a PCT patent application. These applications do exist and provide protection in a large number of countries (currently ~153) for up to 31 months from the earliest priority date of the application. However, such an application will never mature into granted (or enforceable) patent rights. Instead, ‘national phase’ patent applications are subsequently filed at the end of the International phase and it is these national phase patent applications which may eventually mature into granted (and enforceable) patent rights.
So then, if it is not cost effective to file for patent protection in every country or region, and an International patent application won’t provide worldwide patent protection, then how does one go about choosing the right countries or regions to seek patent protection on a limited budget?
Good question!
Strategy and where to pursue patent rights
As a general rule, it is often recommended that Applicants seek and maintain protection in the regions where they have, or intend to have, a commercial presence, for example, at least in Australia (for an Australian inventor).
One may also consider covering the locations where the invention may be manufactured, for example China or India; and, then consider locations where a commercial presence is likely to be nurtured in the near future.
Regarding PCT applications, since the PCT process has a relatively long timeline from the date of earliest priority filing, such applications may be useful in that they provide Applicants additional time to determine whether the invention is worth pursuing and to consider where (i.e. geographically) the invention is worth pursuing. Another advantage is that PCT applications may ease the burden of cost over a longer period. However, such advantages are only advantageous if useful in light of the circumstances of each individual Applicant. For this reason, it is always important to obtain tailored advice from a professional/registered patent attorney.
Key takeaways
– Patents are granted by individual countries, not by any international authority;
– IP owners should prioritise which countries to file into based on commercial presence/benefit;
– IP owners can file a PCT application, then later designate countries of choice (so long as that country is a PCT member);
– A PCT application is a convenient, uniform process that allows applicants to maintain pursuing patent protection rights in a large number of jurisdictions.
Please contact MBIP on 07 3369 2226 to discuss your IP protection options locally and abroad.
