WIPO Lex

A Guide to Applying for your International Patent

APPLICATION GUIDE

A guide to applying for your

international patent

Pa te nt s

Robust intellectual property rights delivered efficiently

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IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

Contents

I have an invention and I want the world to know about it!

What is the Patent Cooperation Treaty (PCT)?

Why should I choose the PCT system?

First in, best dressed

How does the PCT work?

The international phase

The national phase

Searches 16

In more depth

PCT timeline

IP AUSTRALIA InTERnATIOnAl PATEnT APPlICATIOn GUIDE 3

’

’ ’

A bit of advice

PCT Online Electronic Filing

Fees 28

Glossary of terms

Contacting WIPO

Contacting IP Australia

This application guide aims to provide a simple introduction to the Patent Cooperation

Treaty (PCT) system for gaining patent protection. It complements IP Australia s other patent

publications and we encourage you to read them. This guide is designed to help you prepare

and file an international patent 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. You can view this guide at www.wipo.int/pct/en.

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

I have an invention and I want the world to know about it! If you are considering making an international application 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:

• File separate patent applications in each country. This can be cost effective when you file in only a few countries.

• File a single international application under the Patent Cooperation Treaty (PCT) which is administered by the World Intellectual Property Organization (WIPO). This path gives your application automatic effect in over 180 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.

The PCT is simply a method of facilitating the filing of a patent application in a number of countries

simultaneously 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 signatory to the treaty 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 significant period. You may be able to defer your national filing costs for up to 30

months for most countries and 31 months for Australia. This gives you extra time to assess the

value of your invention and its export potential before committing to the high costs involved. This is a

substantial, tangible benefit if you

are just starting out with a new piece of technology and a new business.

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

What is the Patent Cooperation Treaty? The PCT is an international treaty administered by the International Bureau (IB) of the WIPO, with headquarters

in Geneva, Switzerland. The main purpose of the PCT system is to provide a unified, simple patent application

procedure for filing in multiple countries.

The PCT enables you to file a single international application that has the same effect as a separate filing in all

of the PCT member countries. The international application is filed with

a Receiving Office (RO), which checks and processes your application according to the Treaty

and Regulations.

Who IS eLIgIbLe To fILe A PCT APPLICATIoN? To file an international application at least one applicant or inventor must be a national or resident of a PCT

Contracting State. Australia is a PCT Contracting State and IP Australia is the RO for international applications

made by Australian nationals or residents. For an up-to-date list of Contracting States please see www.wipo.

int/members/en

After the international application is processed under the PCT system, the IB sends a notification

to all of the PCT countries. Eventually, if you choose to continue your application for separate patents, your

application will be examined according to the national patent laws of each country.

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

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

• A single application is filed which has effect in all the member countries of the PCT.

• You only need to comply with one set of formalities.

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

• After filing a PCT application you receive an International Search Report (ISR) and an examination 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.

• The option for an International Preliminary Examination (IPE) is available to you to further evaluate the chances of getting a patent before incurring the expenses involved in obtaining separate patents in different countries.

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

• As there is no requirement for you to request an IPE or to enter the national phase for any country, you may stop the process of the international application at any time to avoid incurring further expense.

*note: This is published by the IB at 30 months after the earliest priority date as an International Preliminary Report on

Patentability (Chapter II) (IPRPI), which is communicated to all designated offices unless you opt for IPE.

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

hoW doeS A PCT APPLICATIoN dIffeR fRom oTheR PATeNT APPLICATIoNS mAde oveRSeAS? There are two ways of filing for an application overseas:

• You can apply directly to the Office of each country.

• You can file an application using the PCT.

filing directly to the national office of each country requires you to...

filing a PCT application to the Receiving office requires you to...

• fill in the form(s) required by that Office • fill in a PCT Request form or lodge your applicationelectronically using PCT-SAFE.

• pay the fees for each application in foreign currencies • pay the relevant PCT fees in Australian dollars

• meet the formality standards set by each country • meet the formality standards of the PCT

• provide an address for service in each country

• if required, provide a translation into the local language

• provide a description — including drawings, if necessary • provide a description — including drawings, if necessary

• provide a claim or claims • provide a claim or claims

• provide a certified copy of your Australian application if claiming priority

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

first in, best dressed PRIoRITy dATeS All patent applications (including international applications) have a priority date. Priority dates are

extremely important when considering whether an invention claimed in a patent application is new (the

technical term is novel). If two applicants file two patent applications (on separate occasions) claiming

the same invention, 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 yoU There is an international agreement called the Paris Convention, which allows patent applicants to use

the date of their first patent application in one country as the priority date for their applications in other

countries. This situation applies only if the applicants make their subsequent applications within 12

months of the date of the first patent application.

An international 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 on more than one patent application.

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 the Yellow Pages for a listing of patent attorneys and IP

professionals in your area.

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

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.

• Access to an International Search Report (ISR), an examination report called a WO of the International Searching Authority (ISA) and, optionally, an additional examination report called an International Preliminary Report on Patentabililty (IPRP) which allows you to assess the patentability of your invention.

• 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 or through a regional patent office such as the European Patent Office (EPO).

•May be quicker because possible barriers to patentability have been identified in the international phase.

An international application consists of the request form and the same documents (a description, claims,

drawings, where required, and an abstract) as a standard 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 please visit www.ipaustralia.gov.

au or request free of charge from our Customer Contact Centre on 1300 651 010.

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 before filing an

international application.

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

The international phase In Australia, IP Australia acts as a RO, ISA and International Preliminary Examining Authority (IPEA)

under the PCT.

mINd The STePS The international phase consists of four main stages.

Stage one Application

• The RO assigns the application a filing number.

• The RO checks the application for mistakes in the formalities of the application.

• 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.

• The findings of the search are compiled in a search report called an ISR. An examination report called a WOISA is also produced. WOISA is also known as ISO

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

• You can amend your claims (under Article 19 — see In more depth) based on the findings of your ISR and ISO – amendments must be made within two months of receiving the ISR and ISO or within 16 months of the earliest priority date whichever is later.

• As a PCT requirement, the ISR and ISO must be issued within three months of the application’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, the nordic Patent Institute, Sweden, Finland, the European Patent Office and Austria. Australia does not offer this service. Each SISA sets its own fees and decides the scope of the searches it offers.

Stage Three The application is published by the IB

• 18 months from the earliest priority date, the IB publishes the application and the ISR.

• There is no provision for delay in publishing the application — it can be published without the completed ISR if necessary.

• At this point, if the applicant wishes to avoid or postpone publication, a notice of withdrawal of the international 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.

• At 30 months from the earliest priority date the IB uses the ISO to establish the IPRP (Chapter 1), if the applicant has not opted for an IPE which is communicated to all designated offices.

Stage four — optional An International Preliminary Examination is requested

• You can request an optional IPE of the application — this request is called a demand and should be filed within 22 months of the earliest priority date.

• The IPE is based on the ISO and any amendments you file and helps you refine your application before you decide to proceed with the national phase.

• If you have requested an IPE, and the international preliminary examiner considers that there are still deficiencies in your application, you will be given a WO otherwise the examiner will establish an IPRP (Chapter II).

• The IPEO, like the ISO, explains why documents have been cited and alerts you to any problems your application may have in relation to novelty, inventiveness, and industrial applicability, as well as to any problems of clarity in your specification.

• You can then file amendments to your application (under Article 34 — see In more depth) at the time of filing the demand or in response to an International Preliminary Examination Opinion (IPEO) any time up to the establishment of the IPRP (Chapter II).

• The examiner must in any event establish the IPRP (Chapter II) by 28 months after the earliest priority date. This will be an adverse report if you have not overcome all deficiencies.

• 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.

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

File the Priority application

File the PCT Application with the RO (you may withdraw your application

at any time)

An International Searching Authority carries out an International

Search and issues an International Search Report and a Written Opinion of the

International Searching Authority

You may request an International-type Search

(also known as an Article 15(5) Search)

Establishment of IPRP (Chapter II) by 28 months after the earliest priority date

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

date of mailing of an ISR or 16 months from the earliest priority date whichever is later (these amendments should be made directly

to WIPO)

Apply to enter into the national phase of selected national states

Amendments may be made under the national law of the relevant country

The International Preliminary Examining Authority may issue

additional written opinions

Establishment of IPRP (chapter I) 30 months after the earliest priority date, if

no demand has been filed

Publication of the PCT application by WIPO

Optional steps

You can file a demand for an International Preliminary

Examination

Amendments under Article 34 can be made (these amendments should be made directly

to IP Australia)

IP Australia issues an Australian Application number upon entry into the national

phase in Australia

* 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 has been filed. However, not all countries have 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 www.wipo.int/pct/en

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

AmeNdINg yoUR PCT SPeCIfICATIoN dURINg The INTeRNATIoNAL PhASe You are able to amend your PCT specification at three points during the international

phase of the process.

Requests to correct application errors

Corrections of obvious errors in the specification can be requested at any stage up until entry into the

national phase. An obvious error is one where both the error and the correction should be obvious on

the face of the documents.

Article 19 amendments

You have two months from the date of mailing of the ISR or 16 months from the earliest priority

date, 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 amendments

As part of the IPE process you can also request an amendment under Article 34 of the PCT. The

amendment can be to any part of the PCT specification. These amendments should be sent to IP

Australia. An examiner will consider the amendments during the examination.

Under the PCT system, once the IPRP (Chapter II) is issued, no further amendment of the international

specification is allowed. Thus, any further amendments to the specification must occur after the

specification has entered the national phase with each of the relevant national offices.

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.

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

The national phase Usually by the end of 30 months from the priority date, you will have to ask for the international 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 before 20 months from the

priority date unless you have filed a demand (request) for an IPE that was lodged 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 the WIPO website www.wipo.int/pct/en

To proceed in the national phase you must indicate to each office that you are entering the national phase in

that country. You are required to pay the necessary national fees to those offices and supply any translations

that may be required. The national offices will examine the application under their domestic law and grant or

refuse a patent, according to their own national patent law.

You do not have to enter the national phase in all countries. You should use the time between

filing and national phase entry to check the commercial importance of your application.

IP Australia cannot advise you whether you should enter the national phase in any particular country. Please

be aware that 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. IP Australia requires an address for service in

Australia. This must be a street address in Australia where legal documents can be served.

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

WhAT ReqUIRemeNTS do I Need To meeT To eNTeR The NATIoNAL PhASe IN AUSTRALIA? To enter the national phase in Australia you should:

•Write to IP Australia requesting entry of your PCT application (quoting your PCT application number) and pay the required fee.

• Provide an address for service in Australia (this must be a street address in Australia for legal service).

• If the PCT application is in a language other than English, you must provide a verified English translation of the PCT specification.

If you wish to enter the national phase before IP Australia has received the PCT published specification

you will need to provide in addition to the above:

• A copy of the PCT specification as lodged with the RO.

• A copy of the completed request form lodged with the RO.

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

Searches INTeRNATIoNAL-TyPe SeARCheS: ARTICLe 15 (5) If you have filed an Australian provisional application you can get a patentability search carried out by IP

Australia on your invention before you file a PCT application. This is called an international-type search or

an Article 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). This type of search is

necessarily limited because the inventive concept may not be clearly defined. After having an international-type

search carried out, you may decide to file either a national or a PCT application. Alternatively you may decide

not to proceed and your provisional application will lapse and will not be published.

normally, you should ask IP Australia to perform an international-type search within 10 months of filing your

provisional application. However, we can perform the search as early as possible to ensure you have sufficient

time to consider the search results before the 12 month priority expires. You should receive your international-

type search report about five weeks after you pay the fees and ask IP Australia to conduct the search. The

report is prepared in a similar format to a PCT International Search Report.

When you file your PCT application you must pay the full international search fee. However if IP Australia has

conducted 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 IP

Australia examiner will need to do on your PCT application.

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

In more depth INTeRNATIoNAL SeARCh RePoRT (ISR) Soon after you pay the fees and file an international application with IP Australia it will be forwarded to

an examination section in the relevant technology and allocated to an examiner for the conduct of an

international search. The search examiner will carry out a comprehensive search of the PCT minimum

documentation which includes national, regional and PCT patent documents published after 1920

from all major countries and 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 essential features of your invention. An example of an ISR (main parts

only) is shown on page 21.

Boxes A & 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 to understand the scope of the international search. It helps national offices to ascertain the

relevance of the search during national examination when the claims are possibly in amended form.

Box C identifies the most relevant documents found by the search examiner and indicates their

relevance to the claims in the application.

• The middle column identifies the publication details for each document, including the name of the 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 significance is explained in detail in a box underneath Box C). For example, the “X” category indicates that the document alone raises doubt about the novelty and/or inventiveness of the invention.

• The column on the right identifies claims for which the category indication is relevant.

An Annex to the ISR lists known “family members” of the citations that are identified in the search

report. Family members are related applications in other countries made by the applicant of the

citation for the same or closely related inventions.

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

The ISR may also contain other important information depending on the circumstances. For example it 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 invention(s) searched on payment

of extra fees. The search report may also show that some claims have not been searched because they are

not regarded as covering patentable subject matter or where a meaningful search is not possible because it is

impossible to work out what the invention is. However, a search is done when practicable.

The ISR thus identifies any relevant citations at an early stage during the patenting process, allowing you to

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 IP Australia or alternatively accessed via the Internet from

the relevant patent office site.

WRITTeN oPINIoN of The INTeRNATIoNAL SeARChINg AUThoRITy (ISo) After completing the search, the examiner will also perform an examination and produce a report ISO that

explains why documents have been cited in the ISR and alerts you to any problems your application may have

in relation to novelty, inventiveness, and industrial applicability, as well as to any problems of clarity in your

application’s specification and description.

An example of ISO is shown on page 22.

Box V indicates which claims satisfy the criteria of novelty, inventive step and industrial applicability and

which claims do not. It provides an explanation of the documents cited in the ISR and their 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.

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

The examiner will establish the ISR and ISO and will send them to you. You then have a number of

options:

1. Take no further action until you need to enter the national phase. The ISO will be used by the IB

to establish the IPRP (Chapter 1) and sent to all designated offices at 30 months from earliest

priority date if you do not opt for IPE. Prior to establishing the IPRP (Chapter I), the ISO will be

confidential.

2. Provide written comments to the IB. These comments (including translations if required) will be

sent to all designated offices unless an IPRP (Chapter II) has been or is to be established. These

comments would also be made available to the public but not before the expiration of 30 months

from the priority date.

3. File a Demand for Preliminary Examination. The demand must be filed within 22 months of the

priority date or three months from the date of the ISR, whichever is later. (note however page 14).

ARTICLe 19 AmeNdmeNTS After you have received the ISR and before the application is published, the PCT process provides you

with an opportunity to amend the claims of your international application

under Article 19 of the PCT.

For example, if there are X or Y category documents cited in the ISR, you may wish to amend the

claims to 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.

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

INTeRNATIoNAL PReLImINARy exAmINATIoN ANd ARTICLe 34 AmeNdmeNTS Before entering the national phase, you can choose to have an IPE of the application done by IP Australia in its

capacity as an IPEA. This also gives you the opportunity (under Article 34 of the PCT) to amend any part of your

application to overcome problems and have an examination report IPRP (Chapter II) issued on the amended

application before you enter the national phase in different countries.

An IPE commences at 22 months when you file a Demand and pay the appropriate fee, within the time period

indicated above, together with any submissions or amendments that you would like to make in response to the

ISR and ISO. An IP Australia examiner will examine your application and may issue one or more opinions before

the IPRP (Chapter II) report is issued. You will have the opportunity to file (within certain time limits) a response

to each opinion, which may include submissions, or amendments or both.

An example of an IPRP (Chapter II) (significant parts only) is shown in the example on page 23.

Box V has the same meaning as box V of the ISO.

Box VIII makes other relevant observations in relation to significant issues, which may impact, on the validity of

any potential patent grant. In the example, the examiner considers that claim 10 should include a feature that

is necessary for the invention to function properly and that a feature defined in claim 15 does not correspond

to what is described in the body of the specification.

The IPE opinion/report may also contain other information such as whether there were any restrictions on the

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

For more detail on the interpretation of ISRs, ISOs and IPRP (Chapter II), please refer to the WIPO Guidelines

for International Searches and the WIPO Guidelines for IPE, which you can download from www.wipo.int

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

SUPPLemeNTARy INTeRNATIoNAL SeARCh (SIS) The main international search by the ISA is intended to be a high quality product, but one of the main problems

in finding relevant prior art is that the number of languages is constantly increasing. As a result there is an

increasing risk of new citations being raised during the national phase once you have already incurred significant

costs. The SIS service was introduced as a way to reduce this risk.

Requesting a SIS is a strategic decision, taken after consideration of:

(i) the results of the main international search;

(ii) the commercial importance of the particular application; and/or

(iii) the amount of prior art in the particular technical field which is known to be published in a

language 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.

At the moment there are six Supplementary International Search Authorities (SISA) –Russia, the nordic Patent

Institute, Sweden, Finland, the European Patent Office and Austria. Australia does not offer this service.

Some SISA specialise in searching in a particular language, while others offer a full search as if they were

conducting a “normal” (main) international search. Each SISA sets its own fees and each SISA will only search

one invention. You can ask for more than one SIS to be done on the same international application.

The SISA will produce a supplementary search report which is in the same format as the ISR, but not a

supplementary 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.

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

exAmPLe: INTeRNATIoNAL SeARCh RePoRT

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

exAmPLe: WRITTeN oPINIoN of The INTeRNATIoNAL SeARChINg AUThoRITy

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

exAmPLe: INTeRNATIoNAL PReLImINARy RePoRT oN PATeNTAbILITy

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

PCT timeline moNThS

First Filing (eg Provisional) gives PRIORITY DATE and TIMElInE START

Foreign Filing decision period

(12 months) Convention or PCT application

Applicant may file their international application at any

time within 12 months of priority date – OR use it as

the First Filing

Time for International Search Report and written opinion of the International

Searching Authority to be established

three months

Final date for PCT Application to be filed

PCT FEES TO BE PAID. An applicant has one month from filing to pay PCT fees without penalty. A second month is available but a penalty fee applies.

Demand filed if applicant wishes International Preliminary Examination

Applicant has two months from mailing date of ISR or 16 months from priority date to amend claims – to WIPO

International Application published by WIPO

Request filed if applicant wants a Supplementary International Search (SIS)

International Preliminary Examination

Process (applicant may file

amendments)

Final date for SIS to issue.

30 month deadline to enter national phase in some countries *

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

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

A bit of advice Although our staff cannot give you advice about your particular circumstances, we 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

significant expense and should be treated as such.

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.

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

PCT online electronic filing IP Australia’s PCT Online service is a faster, cheaper way to file international patent applications under the PCT.

PCT applications filed electronically are eligible for a discount and can be transmitted to WIPO faster because

there is no paper or postage involved. For more information regarding fees please see page 28.

IP Australia’s PCT Online service is also available 24 hours a day, 7 days a week (except during advertised

maintenance periods) so that you can file your international patent applications at your own convenience.

PRePARINg yoUR APPLICATIoN WITh PCT-SAfe In order to use IP Australia’s PCT Online service, you will need to get the latest version of WIPO’s PCT-SAFE

software package and a digital certificate. You can download the PCT-SAFE software and apply for a free digital

certificate from the WIPO website www.wipo.int/pct-safe/en. Alternatively, if you already have an ABn-DSC

Certificate issued under the Australian Government’s Gatekeeper scheme, you can use this certificate.

To receive the maximum electronic filing discount, the text of the description, claims and abstract for your

application must be in a character coded format (e.g. XMl) and must be lodged using IP Australia’s PCT Online

service. You can obtain the XMl specification for PCT documents from the WIPO website. You can use WIPO’s

PCT-SAFE Editor to prepare your application documents in WIPO’s XMl format. Alternatively you can use PDF

documents and upload these to PCT-SAFE.

fILINg yoUR APPLICATIoN vIA PCT oNLINe Once you have prepared your application using PCT-SAFE and saved it as a “WASP” (.zg1) file, it is ready for

submission through the online services section of IP Australia’s website.

Once you have uploaded your files, they will be checked for viruses and the validity of your digital signature,

and you will be presented with your pre-filing number and an electronic lodgement receipt.

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

fILINg yoUR APPLICATIoN vIA A hARd CoPy foRm If you have access to the internet, please go to www.wipo.int/pct/en/forms and download the PCT 101

Request form.

If you do not have access to the internet you can request a PCT 101 Request form by contacting IP

Australia’s Customer Contact Centre on 1300 651 010. The form will be sent to you free of charge.

Completed forms should be sent to IP Australia, contact details are on page 33.

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

fees To view the current PCT application fees visit www.ipaustralia.gov.au or contact IP Australia’s Customer Contact

Centre on 1300 651 010.

Notes

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. Fees are payable to the RO. For Australia, the RO is IP Australia.

3. Although the fees are not required to be paid at the time of filing the international application,

the international search will not be performed until the fees are paid. If no fees, or insufficient fees, are paid

you will be invited to pay the fees within one month of filing. If the fees are not paid within the first month, a

second letter requesting payment, plus a penalty payment (50%

of the unpaid fee or the whole of the transmittal fee (whichever is greater) but not more than 50% of the

international filing fee) will be sent to you. If fees are not paid within the second month 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 national

phase. In Australia these will include filing, examination, and maintenance fees.

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

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.

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

glossary of terms Address for

Correspondence

An address in Australia where we can write to you. You should notify IP

Australia if this address changes.

Address for

service Australia

An address for legal service, that is, an address in Australia where

documents may be served on someone personally. You should notify IP

Australia 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 international

application. You should make these amendments directly to WIPO after the

receipt of the ISR, and WO of the ISA.

Article 34

amendment

An optional amendment to the international application which can cover all

documents of the PCT application (excluding the Request form). Article 34

amendments happen during preliminary examination and should be sent to

IP Australia.

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. For an up to date list of contracting

States please see www.wipo.int/pct/en/index.html

demand An application for IPE. This form is separate from the PCT Request (or

application) form.

digital Certificate Digital certificates are required for ensuring the validity and security of

PCT applications filed electronically. Applicants can use a digital certificate

issued by WIPO (free of charge) or the ABn-DSC certificate for their

business.

elected office The national patent office or government body acting for the elected State.

elected State A country that the IB sends the IPRP (Chapter II) to after International

Preliminary Examination. Your demand will automatically elect all the

countries that are signatory to the treaty on the date of your application.

Ib International Bureau of the World Intellectual Property Organization.

Infringement Infringement occurs when someone willingly or unwillingly uses your intellectual

property without your permission.

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

International A patentability search, not an infringement search, and accordingly should not be

Search 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.

IPeA International Preliminary Examining Authority conducts the International Preliminary

Examination.

IPe International Preliminary Examination.

IPeo International Preliminary Examination Opinion. The International Preliminary

Examiner may issue one or more written opinions before the International

Preliminary Report on Patentability (Chapter II) is issued.

IPRP (Chapter II) International Preliminary Report on Patentability (Chapter II). Report helps you to

assess the invention and decide whether or not to enter the national phase in each

of the designated countries. After receiving an ISR and Written Opinion of the ISA,

you also have the opportunity to ask for a non-binding preliminary examination. This

will alert you to any significant problems with your application.

ISo International Search Opinion. It is issued automatically with the ISR and covers

all issues under IPE. WIPO refers to this as the Written Opinion of the Searching

Authority (WOSA).

ISA International Searching Authority carries out the international search and Written

Opinion of the ISA.

ISR International Search Report contains no comments on the value of your invention

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 Uses features of the PCT-SAFE software to help you prepare and file your PCT

application. The PCT-SAFE software can be operated in PCT-EASY mode where

applications are filed on paper, accompanied by request form data and abstract on

diskette or other physical medium (CD-R, DVD-R).

PCT-SAfe Free software provided by WIPO to help you prepare and file your PCT

application. It is designed to simplify the process, save you time and provide

you with cost savings.

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

PCT-SAfe editor Free software provided by WIPO to help you prepare the specifications

for your PCT application in WIPO’s preferred XMl format. The maximum

electronic filing discount will apply to applications filed electronically with

XMl specifications.

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

use PCT Online you will need the PCT-SAFE software from WIPO and a digital

certificate.

Request An application form for PCT.

Ro The national office where the international application is filed then checked

and processed is called the Receiving Office. The original of the application

is sent to the IB of WIPO and a copy to the ISA who will conduct the

international search.

Ro/AU The Receiving Office in Australia is IP Australia.

Rule(s) The PCT term that refers to the details of the Treaty. In Australia they equate

to the Regulations.

SIS Supplementary International Search is a search performed by an ISA other

than the ISA that produced the ISR. The SIS may list citations that do not

appear in the International Search Report (ISR). The SIS is an optional

service and allows you an opportunity to have documents that may not have

been found and listed in the ISR to be located before national phase entry.”

SISA Supplementary International Search Authority carries out the Supplementary

International Search

WIPo World Intellectual Property Organization.

WoISA Writen Opinion of the International Searching Authority.

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

Contacting WIPo Address 34 chemin des Colombettes, Po box 18

1211 geneva 20, Switzerland

Telephone general PCT enquiries: (+41-22) 338 83 38 PCT-SAfe help desk: (+41-22) 338 95 23 Opening hours from 08.30–16.00 Central European Time

Email general PCT enquiries: information.centre@wipo.int PCT-SAfe help desk: pctsafe.help@wipo.int Multilingual staff are always on hand to answer your questions via email

Website www.wipo.int For information and tools relating to the PCT

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

Contacting IP Australia IP Australia staff are happy to help you and to answer your queries. However we cannot assist clients

on legal matters or provide business advice. You may wish to consult a

patent or trade mark attorney, a solicitor experienced in intellectual property matters, or your business

adviser.

IP Australia subscribes to the Telephone Interpreter Service. If you need help communicating in English,

you can phone the interpreter service on 131 450 for the cost of a local call from anywhere in Australia.

All written correspondence regarding patents should be directed to The Commissioner

of Patents.

Postal address Po box 200, Woden ACT 2606

Phone 1300 651 010

general enquiries—contact IP Australia for general information

relating to patents, trade marks, designs or plant breeder’s rights

and for assistance with subscriptions, sale of publications and

electronic communication.

Fax (02) 6283 7999

business Transactions fax—for lodgements, filings and business

related correspondence such as financial and confidential material.

Faxes received at this secure number are receipted at Australian

Eastern Standard/ Daylight

Saving time.

Email assist@ipaustralia.gov.au—for general enquiries.

However filing of documents is not available through

this address.

Website www.ipaustralia.gov.au—for information relating to intellectual

property, to submit online applications,

and to download forms and other documents.

IP AUSTRALIA InternatIonal Patent aPPlICatIon GUIDe

CUSTomeR SeRvICe ChARTeR IP Australia is committed to being a customer focused organisation. To help our customers, IP Australia has

a Customer Service Charter outlining the standards of service you can expect from us. To obtain a copy of

the charter, simply ring 1300 651 010 or visit our website.

CommUNICATINg eLeCTRoNICALLy WITh IP AUSTRALIA The date which you provide information to IP Australia can be critical to the certainty of your intellectual

property rights.

IP Australia has implemented a set of business rules which establish that when you communicate with us

electronically (eg email, fax or online) using our preferred contact numbers and methods, the date and time of

communication will be Australian Eastern Standard/Daylight Saving time.

Our preferred means of communication are:

• the IP Australia website—www.ipaustralia.gov.au

• our business transactions fax number—(02) 6283 7999

• email—assist@ipaustralia.gov.au

Communication sent to other contact points electronically will be processed in accordance with the date

and time at the place of receipt. These communications will not gain the benefits provided by the Electronic

Transactions Act such as security and certainty of receipt.

The Electronic Transactions Act business rules address a range of issues including:

• identifying the appropriate form of electronic communication to use for different types of correspondence

• choosing electronic payment options

• receiving notifications

• utilising supported electronic formats.

Further details on IP Australia’s electronic communication business rules can be found at

www.ipaustralia.gov.au

ipaustralia.gov.au

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A Guide to Applying for your International Patent