Australian Patent Application Types and How to File
There are four routes to patent protection that start with an Australian patent application: a provisional application, a standard application, an international (PCT) application and a convention application. Which one you file first depends on how developed your invention is, whether you need protection outside Australia, and whether you have already filed overseas.
Which patent application do you need?
If your invention is still developing, or you want to talk to manufacturers, investors or customers before committing to the full cost of protection, a provisional application secures your priority date for 12 months. If you are ready to pursue enforceable rights in Australia, a standard application is the one that can be examined and granted. If you expect to need protection in other countries but are not ready to choose them, a PCT application holds that option open. If you have already filed in another Paris Convention country within the last 12 months, a convention application lets your Australian filing claim that earlier date.
The table below compares the four. Each row links to a fuller explanation of that route.
| Type of application | What it is | When to use it | How long it lasts | Cost profile |
|---|---|---|---|---|
| Provisional application | What it is: Establishes a priority date. It cannot itself be granted or enforced. | When to use it: You want to secure a date while you continue developing, testing or raising funds. | How long it lasts: 12 months, after which a standard or PCT application must follow to keep the priority date. | Cost profile: The lowest upfront cost of the four; the larger costs come at the next step. |
| Standard application | What it is: The application that can be examined, granted and enforced in Australia. It must include at least one claim. | When to use it: You are ready to seek enforceable patent rights in Australia. | How long it lasts: Up to 20 years from the filing date, subject to renewal fees. | Cost profile: Government fees plus attorney fees. Additional grant fees apply for each claim over 20. |
| PCT (international) application | What it is: A single application that preserves your rights in more than 150 countries. | When to use it: You expect to need protection beyond Australia but are not ready to choose the countries. | How long it lasts: National phase entry generally falls due 30 or 31 months from the priority date, depending on the country. | Cost profile: Defers the larger per-country costs until national phase entry. |
| Convention application | What it is: An Australian application that claims the filing date of an earlier application made in another Paris Convention country. | When to use it: You filed overseas first and want Australian protection carrying that earlier date. | How long it lasts: Must be filed within 12 months of the earlier overseas application. | Cost profile: Similar to a standard application, plus any translation costs. |
Fees depend on the invention, the number of claims and the countries involved, so we quote each matter individually — see patent costs for what drives them. Once filed, every application follows the same route through examination; the patent application process page sets out each stage in order.
Filing a provisional patent application
A provisional patent application is useful for securing a priority date for an invention, however, only a standard patent application can be granted and provide enforceable rights. A provisional patent expires after 12 months and must therefore be followed up by a standard or PCT patent application in order for a patentee to continue along the path toward being granted patent rights.
A provisional patent secures an international filing date so you can then enter into any commercial discussions with the knowledge that your priority date has been secured. You should not, however, disclose any information in your meetings if that information was not also included in the provisional patent. The good news is that you can file multiple provisional patent applications covering updated information and then claim priority from each one so long as you file a standard or PCT patent within 12 months of the earliest priority date, i.e. your first filed provisional patent.
Form of patent applications when filed
Patent applications must include a patent request form that identifies the owners of the patent application along with other details such as the inventors to be named, the title of the invention and any other associated priority documents (such as a provisional application). The other important document that must be filed is a patent specification. The specification is a document that describes the invention in sufficient detail to allow a person skilled in the art to recreate the invention armed only with the document and their own knowledge of the industry. A specification typically includes an abstract, drawings and a detailed description of at least one embodiment or version of the invention.
Filing a standard patent application
A standard patent application must include at least one claim that defines the scope of the monopoly the applicant is seeking. A standard patent application can have as many claims as is necessary although each must include the same inventive concept and additional government grant fees apply for each claim over 20.
The majority of work in preparing a standard patent application for filing goes into preparing the patent specification. It is extremely important for the patent attorney to receive all the information about the invention when preparing the specification as only very limited changes can be made to the specification once it has been filed. No new information can be added to a specification once it is lodged. While minor amendments can be made, these changes can only be made within the scope of the information as filed.
How to work with your patent attorney
The best way to assist your patent attorney in preparing the specification is to fully document your invention along with any sketches or drawings. This can then be sent confidentially to your patent attorney who will review the material and then typically arrange one or more meetings so they can fully understand the invention. This will allow the patent attorney to include all the necessary information in the specification and will assist them in understanding where the crux of the invention is. This will ultimately lead to a better patent specification and ultimately stronger patent rights if your patent is granted.
Important considerations in timing
Depending on the complexity of your invention, it can typically take between 2 and 6 weeks for your attorney to prepare and file a patent application. This time is required due to the complexity of the patent specification and the need to fully describe your invention. Ideally, you should not disclose the invention to any other person or company, even with non-disclosure agreements, prior to securing your filing date as any public disclosure could invalidate your patent (even if you are the one to disclose the information).
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