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
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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.
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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.
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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.
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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
• provide a certified copy of your Australian application if claiming priority
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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.
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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.
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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
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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.
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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.
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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.
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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.
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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.
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exAmPLe: INTeRNATIoNAL SeARCh RePoRT
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exAmPLe: WRITTeN oPINIoN of The INTeRNATIoNAL SeARChINg AUThoRITy
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exAmPLe: INTeRNATIoNAL PReLImINARy RePoRT oN PATeNTAbILITy
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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.
* 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
30 month deadline to enter national phase in some countries *
31 month deadline to enter national phase in some countries (Australia)
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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.
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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.
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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.
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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.
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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
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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
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