It not possible to obtain an international patent. However, it is possible to file what is known as an international application or PCT application. PCT stands for "Patent Co-operation Treaty".
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\n\nA list of the PCT member countries can be found here. The PCT was formed to allow applicants to file a single application that designates a large number of countries, without the need to file directly in those countries. In terms of the treaty, it is possible to file an international application at any one of a number of receiving offices around the world. The Australian patent office is one of the receiving offices.
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An international application effectively initiates an application in each of the countries that are a party to the PCT. However, it is still necessary to extend the application separately into each of the countries in which protection is required. The stage up until the application is so extended is called the international phase. The stage after extension is called the national phase.
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\n\nThe international application "buys" you a further 18 to 19 months in addition to the 12 months mentioned above. There are some advantages. The international application is examined. Examination gives you an opportunity to anticipate how the application will fare during national phase. This can be important because, generally, each country's patent office will examine the application during national phase. So, if you manage to convince the international authorities that the invention is patentable, that can ease the way during national phase.
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\n\nIt can be very expensive to enter national phase in a number of countries, particularly if your list includes the United States, Europe and a number of Asian countries that require translation. An international application gives more time to make deals and possibly even get some positive cash flow before taking on the sort of expense required for a number of countries.
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\n\nOnce the international application is filed, an International Search Report and Preliminary Written Opinion (ISR) usually issues within about 3 to 4 months.
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\n\nIf appropriate, a response to the ISR is filed together with a Demand for International Preliminary Examination within 22 months of the priority date. This should be done sooner rather than later because the authorities need to establish an International Preliminary Report on Patentability (IPRP) within 28 months of the priority date. This is an optional step and is usually not required if the examining authorities issue an opinion that the invention is novel, inventive and has industrial applicability.
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\n\nNational phase must be entered in any of the member countries within 30 or 31 months from the filing date of the application on which the international application is based.
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\n\nIt is important to bear in mind that the IPRP is generated by Australian examiners unless you elect a different search authority. Foreign jurisdictions may still carry out their own examinations. It follows that you can't assume that an IPRP that indicates that your invention is novel and inventive will be given any weight during the national phase in those jurisdictions.
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\n\nAn ongoing contentious issue is proper subject matter for a patent. For example, Europe usually does not allow the grant of patents for software products that are not tied to a technical effect. The US, Australia, China, Korea and Japan, for example, usually do permit such patents to varying degrees. This means that your international application covering a software product could be granted in a number of countries while being refused in Europe regardless of the fact that the international authorities were of the opinion that it was allowable.
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\n\nFurther searches will be carried out in the various jurisdictions. These jurisdictions often focus on their own records. For example, a Chinese examiner may carry out a search in an area not covered by the Australian examiner. In recent years, China has been building an extensive patent database since the number of applications first filed in China is increasing rapidly. It follows that national phase entry in China may result in the discovery of prior art information that is highly relevant to the grant of your patent. Bear in mind too that the results of these searches will effect your entire patent portfolio, including your Australian application or patent.
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\n\nGiven this, applicants with a view to establishing a product outside of Australia sometimes nominate the search authorities of larger jurisdictions to carry out the examination of the international application. This may cost more, but can be worthwhile depending on the location of the largest and most relevant target market of the applicant.
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\n\nAlternatively, you might want to consider carrying out an international novelty search before taking the step of filing the international application.
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\n\nIt is critical that that application contain as much information as possible. Australia can be quite liberal when it comes to adjusting or amending the application in response to an examination. However, in jurisdictions such as Europe and China, it is generally not possible to go beyond the literal disclosure of the application as filed. Thus, if the specification is inadequate, you could end up in situation where you are precluded from amending to overcome an adverse examination report. That could result in loss of patent rights in that country.
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\n\nIn short, bear in mind that the specification filed with the international application will need to comply with the requirements, practical and legal, of all countries that you eventually designate.
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