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Obtaining International IP Protection

An Australian provisional patent application lodged at IP Australia (IPA) is usually the first step in obtaining one or more patents anywhere in the world. The date on which a provisional patent application is received by the IPA is known as its “priority date”. To obtain patent protection in specific countries of interest, it is necessary to establish a filing date in the countries of interest within 12 months of filing the provisional patent application, in order to maintain the priority date. There are two ways to establish this filing date:

1. By filing individual complete patent applications directly in the countries of interest.

2. By filing a Patent Cooperation Treaty (PCT) International Patent Application, followed by filing individual complete patent applications in the countries of interest within 18 months of the date the PCT International Patent Application is filed.

In relation to option 1, if an inventor intends on filing several individual patent applications directly, filing costs will be significant. One advantage of electing to proceed with option 2 is that the deadline for filing individual complete patent applications in the countries of interest is delayed by up to a further 18 months (i.e. 30 months from the priority date). Consequently, the significant costs associated with these individual applications are also delayed.

The current list of 142 states (correct as of 14 January 2010) bounded by the PCT includes: Albania, Algeria, Angola, Antigua and Barbuda, Armenia, Australia, Austria, Azerbaijan, Bahrain, Barbados, Belarus, Belgium, Belize, Benin, Bosnia and Herzegovina, Botswana, Brazil, Bulgaria, Burkina Faso, Cameroon, Canada, Central African Republic, Chad, Chile, China, Colombia, Comoros, Congo, Costa Rica, Côte d’Ivoire, Croatia, Cuba, Cyprus, Czech Republic, Democratic People’s Republic of Korea, Denmark, Dominica, Dominican Republic, Ecuador, Egypt, El Salvador, Equatorial Guinea, Estonia, Finland, France, Gabon, Gambia, Georgia, Germany, Ghana, Greece, Grenada, Guatemala, Guinea, Guinea-Bissau, Honduras, Hungary, Iceland, India, Indonesia, Ireland, Israel, Italy, Japan, Kazakhstan, Kenya, Kyrgyzstan, Lao People’s Democratic Republic, Latvia, Lesotho, Liberia, Libyan Arab Jamahiriya, Liechtenstein, Lithuania, Luxembourg, Madagascar, Malawi, Malaysia, Mali, Malta, Mauritania, Mexico, Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, Netherlands, New Zealand, Nicaragua, Niger, Nigeria, Norway, Oman, Papua New Guinea, Peru, Philippines, Poland, Portugal, Republic of Korea, Republic of Moldova, Romania, Russian Federation, Saint Kitts and Nevis, Saint Lucia, Saint Vincent and the Grenadines, San Marino, Sao Tome and Principe, Senegal, Serbia, Seychelles, Sierra Leone, Singapore, Slovakia, Slovenia, South Africa, Spain, Sri Lanka, Sudan, Swaziland, Sweden, Switzerland, Syrian Arab Republic, Tajikistan, Thailand, The former Yugoslav Republic of Macedonia, Togo, Trinidad and Tobago, Tunisia, Turkey, Turkmenistan, Uganda, Ukraine, United Arab Emirates, United Kingdom, United Republic of Tanzania, United States of America, Uzbekistan, Viet Nam, Zambia, and Zimbabwe.

The list of states that are NOT bounded by the PCT includes Argentina, Pakistan, Taiwan, Hong Kong, Saudi Arabia, and Venezuela. However, it is possible to file applications in these states by other means. In this regard, please consult with a registered patent attorney who can advise you on the best approach to protect your invention in these states.