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A Guide to Applying for your Patent Overseas

 A Guide to Applying for your Patent Overseas

A guide to applying for your patent overseas

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Disclaimer

This application guide aims to provide a simple introduction to the Patent Cooperation Treaty (PCT) system for gaining patent protection. 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.

Contents I 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

PCT online electronic filing 22

Fees 24

Contact us 25

Contacting WIPO 27

Glossary of terms 28

A guide to applying for your patents overseas 3

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:

• 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). 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. 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 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 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.

A guide to applying for your patents overseas 4

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 PCT application that has the same effect as filing a separate application in all of the PCT member countries. The PCT 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 PCT 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 we are the RO for international applications 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 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 you choose.

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

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

• 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.

• after filing a PCT application you will 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. 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.

• 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.

*This is published by the IB at 30 months after the earliest priority date as an International Preliminary Report on Patentability (Chapter I) (IPRPI), which is communicated to all designated offices unless you opt for IPE.

A guide to applying for your patents overseas 5

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.

• access to an International Search Report (ISR), a written opinion (WO) of the International Searching Authority (ISA) called an International Search Opinion (ISO) and, if requested, an additional examination report called an International Preliminary Report on Patentabililty (Chapter II) (IPRPII) 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.

Your PCT application A 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 before filing an international application.

First in, best dressed

Priority dates All 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 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.

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 professionals and search firms.

A guide to applying for your patents overseas 7

The international phase In Australia, we act as a RO, ISA and International Preliminary Examining Authority (IPEA) under the PCT. This means that we can carry out all stages of assessing your PCT application.

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 written opinion is also produced. The opinion is also known as an International Search Opinion (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 IP Australia issuing the ISR and ISO or within 16 months of the earliest priority date whichever is later.

• As a PCT requirement, the ISR and ISO should 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.

A guide to applying for your patents overseas 8

A guide to applying for your patents overseas 9

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 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.

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

Stage four: optional

• An International Preliminary Examination (IPE) 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 an International Preliminary Examination Opinion (IPEO); 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 file amendments to your application (under Article 34 — see the In more depth section of this guide) at the time of filing the dDemand or in response to an 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 thenational 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

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 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 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 us. 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 PCT 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.

The national phase Usually 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 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 WIPO’s website.

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 shoul d use the time between filing and national 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.

Requirements to enter the national phase To 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.

• provide an address for legal service in Australia (this can be a Post Office Box in Australia).

• if the PCT application is in a language other than English, you must provide an 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 the following in addition to the above:

• a copy of the PCT specification as lodged with the RO (with a translation if necessary).

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

A guide to applying for your patents overseas 11

Searches

International-type searches: Article 15(5) If you have filed an Australian provisional application you can get a patentability search carried out by us 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). We will ask you to provide us with an indication of what you would like searched, if the subject of the search is not readily apparent. 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.

You must ask us to perform an international-type search within 10 months of filing your provisional application. This will ensure you have sufficient time to consider the search results before the 12 month priority 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 International Search Report and written opinion.

When you file your PCT application you must pay the full international search fee. However if we have 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 examiner will need to do on your PCT application.

A guide to applying for your patents overseas 12

In more depth

International search report (ISR) Soon after you pay the fees and file a PCT application with us it will be forwarded to an examination section 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 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 is shown on page 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 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.

• he 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.

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 inventions 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 us or alternatively accessed via the internet from the relevant patent office site.

A guide to applying for your patents overseas 13

A guide to applying for your patents overseas 14

Written opinion of the international searching authority After completing the search, the examiner will also perform an examination and produce an International Search Opinion (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 an ISO is shown on page 17.

Box V of the ISO 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.

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 I) and make it available 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 available 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 IPE. The demand must be filed within 22 months of the priority date or three months from the date of the ISR, whichever is later. When filing the Demand you may also make changes to your specification and provide submissions to the examiner explaining why your invention is new and inventive.

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.

A guide to applying for your patents overseas 15

International preliminary examination (IPE) 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 when you file a Demand, together with any submissions or amendments that you would like to make in response to the ISR and ISO, and pay the appropriate fee, within a time period that ends either 22 months from the priority date or 3 months from the date you received the ISR (whichever is later). Please note that you cannot file a Demand after this time limit has passed. 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 18. Box V of the IPRP (Chapter II) 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 WIPO’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 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 an SIS is a strategic decision, taken after consideration of:

• the results of the main international search

• the commercial importance of the particular application

• 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 have passed.

At the moment there are six Supplementary International Search Authorities (SISA): Russia; the Nordic Patent Institute; Sweden; Finland; the European Patent Office; and Austria.

We do 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 PCT 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

A guide to applying for your patents overseas 16

Example: International Search Report (ISR)

A guide to applying for your patents overseas 17

Example: Written Opinion of the International Searching Authority

A guide to applying for your patents overseas 18

Example: International Preliminary Report on Patentability

19

Flowchart of an international patent application

File the Priority application

You may request an International-type

Search on your AU priority application (also

known as an Article 15(5) Search)

Publication of the PCT application by the IB

You can file a demand for an International

Preliminary Examination

Amendments under Article 34 can be made

(these amendments should be made directly

to us)

The International Preliminary Examining

Authority may issue additional written

opinions

Establishment of IPRP (Chapter II) by 28

months after the earliest priority date

Amendments may be made under the national

law of the relevant country

Establishment of IPRP (Chapter I) 30 months

after the earliest priority date, if no demand has

been filed

Apply to enter into the national phase of

selected national states

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 the IB)

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

*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

We issue an Australian Application

number upon entry into the national phase in

Australia

A guide to applying for your patents overseas

20

5

10

15

20

25

30

Timeline of a PCT application

Months

1

2

3

4

6

7

8

9

11

12

13

14

16

17

18

19

21

22

23

24

26

27

28

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

Demand filed if applicant wishes International Preliminary Examination

International Preliminary Examination Process (applicant may file

amendments) Final date for SIS to issue.

Time for ISR and written opinion of the International Searching Authority to be established three months

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

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.

International Application published by WIPO. Request filed if applicant wants a Supplementary International Search (SIS)

29

31

30 month deadline to enter national phase in some countries *

31 month deadline to enter national phase in some countries (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.

A guide to applying for your patents overseas

A bit of advice Our 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 significant expense and should be treated as such.

! Obtaining a commercially useful patent requires a high level of expertiseand therefore we recommend that you seek professional help before seekinginternational 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.

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PCT online electronic filing We offer two online methods for you to file your PCT application, both of which are provided by WIPO.

The preferred option is ePCT. Alternatively you may use PCT-SAFE.

Online services are 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. See fees for more information.

Online services also enable you to file your international patent applications at any time.

Preparing your application with ePCT ePCT is the preferred channel for filing PCT applications and associated requests.

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, portfolios and receive notifications in accordance with their PCT needs and preferences.

Other benefits for using the ePCT system include:

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

• immediate allocation of a PCT application number upon filing

• a reduced international filing fee for an electronic filing

• access to up to date information on your application

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

• ability to upload documents for consideration by the processing office

• a link to WIPO’s Digital Access Service (DAS) and the ability for the RO to obtain priority documents from DAS

• 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.

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A guide to applying for your patents overseas 23

Preparing your application with PCT-SAFE As an alternative to ePCT you can useWIPO’s PCT-SAFE. Before using PCT-SAFE 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 theWIPO website. Alternatively, if you already have an ABN-DSC 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 our 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 lodgment receipt.

Filing your application via a hard copy form If you have access to the internet, go to WIPO’s website 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 us. The form will be sent to you free of charge. Completed forms should be returned to us.

Fees The 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. fees are payable to the RO. We are the RO for 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 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 invoices Anyone 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 companies that send these unofficial invoices, and for examples of the 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 do not provide official trade mark registration or trade mark rights in Australia or overseas.

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Contact us Our 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.

We subscribe 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 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 (within Australia); +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 us The date you provide information to us can be critical to the certainty of your IP rights.

We haves implemented a set of Electronic Business Rules that mean that when you communicate with us electronically (e.g. online), using our preferred method, the date and time of that communication will be Australian Eastern Standard/Daylight Saving Time.

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:

• identifying the appropriate file formats to submit your service request

• providing a list of electronic payment options.

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Privacy of personal information We 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 charter We 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.

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Contacting WIPO Address 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 (PCT e-Services)

Opening hours from 9:00–18:00 Central European Time

Email epct@wipo.int - PCT Information Service (for general PCT enquiries),PCT-SAFE, ePCT & DAS (PCT e-Services). multilingual staff are always on hand to answer your questions via email

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

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Glossary of terms

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

Address for 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 shouldservice in notify us if the address changes.Australia

Applicant The person(s) or organisation(s) making the application. Article 19 An optional amendment that is applied to the claims of the PCT

application. You should make these amendments directly to the IB afteramendment the receipt of the ISR, and WO of the ISA.

Article 34 An optional amendment to the PCT application which can cover all documents of the PCT application (excluding the Request form).amendment 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 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 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.

ePCT WIPO’s fully electronic filing and management system for 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 A patentability search, not an infringement search, and accordingly should not be relied upon to identify patents which may be infringed by theSearch claimed invention.

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

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A guide to applying for your patents overseas 29

IPEA

IPE IPEO

IPRP (Chapter II)

ISO

ISA

ISR

PCT PCT-EASY

PCT-SAFE

PCT-SAFE editor

PCT online

Request RO

RO/AU Rule(s)

SIS

SISA

WIPO

WOISA

International Preliminary Examining Authority conducts the International Preliminary Examination. International Preliminary Examination.

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. 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. 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). International Searching Authority carries out the international search and Written Opinion of the ISA. 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. Patent Cooperation Treaty.

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). This service will not be available after 30 June, 2015. 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. 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. 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. An application form for the PCT.

The Receiving Office - the national office where the international application is filed then checked and processed. The original of the application is sent to the IB of WIPO and a copy to the ISA who will conduct the international search. The Receiving Office in Australia is IP Australia.

The PCT term that refers to the details of the Treaty. They are similar to what are called Regulations in Australia.

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. Supplementary International Search Authority carries out the Supplementary International Search

World Intellectual Property Organization, based in Geneva, Switzerland.

Written Opinion of the International Searching Authority.

www.ipaustralia.gov.au

© Commonwealth of Australia 2014