By virtue of an International Convention, patent applications lodged in many overseas countries within one year of the priority date in Australia, will be treated as if they had been lodged on the priority date, and the newness of the invention will be judged accordingly. If you are thinking of obtaining overseas patent protection you should discuss the various options with us, within the first year.
There is no such thing as a "world patent". A patent application needs to be lodged in each country where a patent is required. Patent laws differ from country to country so that not every invention will be patentable in all countries. For instance pharmaceutical and food substances are not patentable in Indonesia or India. Also, some inventions must be claimed in different terms in different countries.
A few countries do not have patent systems, notably Burma and Cambodia. Some countries grant patents by "revalidating" a patent obtained in another country. For instance, Hong Kong revalidates patents granted in the United Kingdom. The maximum term of a patent varies from country to country but is usually between 10 and 20 years.
In most industrial countries it is possible to file an application under the Paris Convention up to one year after filing an application in Australia, and to have it treated as though it had been lodged on its priority date. In South-East Asia there are a number of important exceptions such as Taiwan and Thailand, where an application must be made before the invention is published in Australia.
To file applications in overseas countries, it may be necessary to execute a Power of Attorney appointing a local Patent Attorney to act on your behalf, to sign a declaration claiming inventorship, and to have a special assignment executed to confirm any transfer of ownership in that country.
Overseas patent protection can be expensive. The costs associated with obtaining patent protection often include translating the specification, filing the application, examining the application, sealing the patent and payment of renewal fees. The costs of prosecuting a patent to grant in a single overseas country frequently exceed $10,000. For complex inventions the costs can be far higher.
Australia is also a member of the Patent Cooperation Treaty (PCT). This treaty allows a single International application to be filed in the English language in Australia indicating that you intend to apply for patents in designated countries which are members of the PCT; the effect is similar to buying an option. The option can be extended for a maximum of 30 months before it is necessary to abandon the option or file applications in selected designated countries. During the option period a search is conducted and a preliminary examination may take place, which provides an indication of the likely success of subsequent overseas applications. If you know in advance exactly the countries in which protection is required, using the PCT will increase the expense of the process, although it will defer major expense. We usually recommend the PCT route where it is crucial to defer expense, or where applicants wish to keep their options open for longer than the normal 12 month period.
There is also a European Patent Convention which allows a single application to be filed in the English language at the European Patent Office designating most western European countries. This Regional application is examined centrally and there is no need to translate the specification or pay any national fees until the application is granted. A European Regional application can follow a PCT application.
If you are considering filing patent applications in overseas countries, it is important to discuss the options with us within the first year to develop a suitable strategy.
Small Entity Status in the USA and Canada
Where applicants can establish "Small Entity Status", reduced Patent Office fees are payable. There is usually a fee associated with having the status formally recognised, and this fee is payable in respect of each patent application made. It should be appreciated that the status may well change during the life of a patent application and it is important to notify the Patent Office promptly of any such change otherwise you may be found guilty of fraud on the Patent Office, which may result in rendering the patent invalid, and give rise to other possible sanctions.
In the U.S.A., three classes of applicants may qualify for Small Entity Status:
Private individuals - for example, inventors.
Small businesses - that is businesses in which the number of employees, including those of its affiliates, does not exceed 500. The number is the average of the full-time, part-time or temporary employees during each pay period averaged over the previous fiscal year. Businesses are affiliated when either, one directly or indirectly controls or has the power to control the other, or a third party has the power to control both.
Non-profit organisations - for example, universities or other institutions of higher education. Organisations which are tax exempt under Internal Revenue Service Code [26 USC 501(a)(3)], or would be exempt if located in the U.S.A. Scientific or educational organisations recognised under the Statute of a State of the U.S.A., or those which would be recognised if they were located in the U.S.A.
Small Entity Status is only available provided that you have not assigned, granted, conveyed or licensed any rights in the invention to any non-Small Entity, and do not enter an obligation to do so.
In Canada, three classes of applicants may qualify for Small Entity Status:
Private individuals - for example, inventors
Small businesses that do not have more than 50 employees
Small businesses must not have assigned or be under any contractual or legal obligation to assign any right in the invention to any individual or other person not qualifying as a small entity.
Brett Lunn is Managing Partner of FB Rice, and one of Australia’s most experienced and pragmatic intellectual property (IP) specialists. Having moved largely to an advisory capacity in recent years, Brett specialises in providing strategic advice in the corporate sphere, advising a range of businesses from corporations and SMEs to start-ups and research institutions.