International Patent Applications and the Paris Convention: What to know and where to file first

Australian Patent VS International Patent

An Australian patent protects your invention only in Australia. If you are considering entering the international market with your invention, you need to file international patent applications. You can do this in two ways:

  • Through the Paris Convention, and

  • Through the Patent Cooperation Treaty (PCT), which is administered by the World Intellectual Property Organization (WIIPO)

The Paris Convention is a treaty that offers its member countries some flexibility when filing patent applications. It gives a citizen of a member country some grace period within which they can file their patent applications in any other member country. For design patents and trademarks, the grace period is six months, while invention patents get a grace period of one year.

How is the patent grace period measured?

The grace period is typically measured from the date of filing the first application. So, suppose you are a business owner domiciled in a member country, or you want to get patent protection in some member countries. In that case, you will first file your application in your home country and then file corresponding applications in other member countries. Note, however, that you must file this application within the grace period allotted to your innovation.

What are the benefits?

A significant benefit the Paris Convention provides member countries is the claim to priority. The claim to priority means that if you file your application in another member country, your application will be treated as if it was filed on the same date you filed the original one in your home country. For more information on this, click here to speak with one of our intellectual property attorneys at BONDiP.

The Patent Cooperation Treaty (PCT)

The Patent Cooperation Treaty (PCT) allows you to file a single international patent application at your home country’s patent office. The unique thing about filing under the PCT is that you can file a patent application in several different countries at the same time.

When you apply for an international patent, your application automatically takes effect in over 150 countries because of the Patent Cooperation Treaty. It also gives you some extra time to decide whether you want to continue with your international patent application and which countries you want to pursue the patent protection. For most countries, you have up to 30 months and 31 months for Australia. This way, you can extend the grace period you have from the 12 months the Paris Convention gives you.

Fortunately, many member countries of the Paris Convention are also members of the Patent Cooperation Treaty. However, note that you will still need to meet the patent filing requirements of each country you choose. Also, unlike the Paris Convention, the PCT only covers invention patents. It does not cover design patents or trademarks. Thus, you cannot use the PCT to prolong the six-month grace period you get with the Paris Convention.