In Australia, we act as a Receiving Office, International Searching Authority and International Preliminary Examining Authority under the Patent Cooperation Treaty (PCT).
The PCT application process can be broken up into 5 stages:
- PCT application is filed
- An international search is carried out
- The application is published by the International Bureau
- An International Preliminary Examination is requested (optional)
- Entry into National Phase requested.
Stage 1: Submitting PCT Applications
A PCT application consists of the request form and the same documents (a description, claims, drawings where required and an abstract) as a standard patent application.
There a multiple methods to filing a PCT application.
- ePCT - Fully electronic (our preferred method of filing) - attracts reduced fee
- PCT-SAFE - Fully electronic - attracts reduced fee
- eServices (does not attract any reduction in fees)
- Paper (does not attract any reduction in fees)
You need to file your PCT application with a Receiving Office (RO), who checks and processes your application according to the Treaty and Regulations. We are the Receiving Office for Australian applicants.
You can file your PCT application with us as an electronic application via the new World Intellectual Property Organization's (WIPO) hosted system, ePCT. For more information on how to register and get started on ePCT, please refer to WIPO's FAQs, Getting Started Page and User Guide.
Alternatively, you can file your PCT application with us as an electronic application using the PCT-SAFE software or as paper-based application (using the PCT Request Form).
If you wish to file your PCT application online please refer to Filing a PCT application online.
You can find additional information about applying for a PCT application in our International Patents Guide.
Stage 2: Reports, opinions and examination of a PCT application
After filing a PCT application you will receive an International Search Report (ISR) and an examination report called a Written Opinion of the International Searching Authority, also called an International Search Opinion (ISO).
The ISO indicates the validity of your patent application and if there are any inventions that are similar to yours. This may assist you in refining your patent strategy.
The ISR and ISO are usually issued within three months of the PCT application being filed or nine months from the earliest priority date, whichever is later.
You can amend your claims (under Article 19 of the PCT) based on the findings of the ISR and ISO. Amendments to the claims must be made within two months of receiving the ISR and ISO or within 16 months of the earliest priority date, whichever is later. You must send your amended claims, with the reasons you are making them, to the International Bureau. This can be done using document upload in ePCT
Stage 3: Application published by the International Bureau (IB)
The International Bureau publishes the PCT application and the ISR 18 months after the earliest priority date. There is no way to delay the publishing of the PCT application. The application will be published even if the ISR has not been issued. If this is the case, once it is received the missing ISR will be published at a later date.
Stage 4: International preliminary examination
You have the option to file a request, also known as a 'Demand', with us for an International Preliminary Examination. This provides the option to further evaluate the chances of getting a patent before you pay for separate patents in different countries.
The Demand needs to be filed and fees paid within 22 months from the earliest priority date or within three months from the date you received the ISR (whichever is later). When filing the Demand, you are also able to amend any part of your PCT application (under Article 34 of the PCT) to overcome problems identified in the ISO.
Within the International Preliminary Examination stage, we assess your PCT application and may issue an International Preliminary Examination Opinion (IPEO). If you receive an IPEO you have the opportunity to overcome problems identified in the IPEO, either by filing amendments (under Article 34) or arguments.
The International Preliminary Examination stage concludes when we issue the International Preliminary Report on Patentability (IPRPII). This report will be issued no more than 28 months from the earliest priority date, however, it may be issued earlier if it is believed that there are no problems or if, when you filed your Demand, you did not file any amendments or arguments regarding problems raised in the ISO.
EPCT is our preferred method for filing Demands for Preliminary Examination and responding to an IPEO's, including filing amendments.
NOTE: The decision on granting a patent remains the task of the national or regional offices where you enter the national phase. The IPRPII is authoritive but it is not binding in these offices. For further details on the interpretation of ISRs, ISOs and IPRPIIs, see WIPO.
Stage 5: The national phase
An ISR, ISO or IPRPII which indicates that there are no problems in your PCT application (sometimes called a 'clear report') does not automatically lead to a patent being granted in any country that is a member of the PCT. To get patents in some or all of these countries you have to enter the national/regional phase in each country where you want a patent. Please note that you do not have to have a clear report to enter the national phase.
The time limit for entering the national phase varies from country to country. In Australia you have up to 31 months after your earliest priority date to enter the national phase. Some countries have an earlier time limit and others have a later time limit. You should check the timing requirements of each individual country.
In order to enter the national phase in Australia within 31 months from the earliest priority date you are required to (as a minimum):
- tell us that you want to enter the national phase using eServices or by mail. You will need to tell us which PCT application your request relates to by telling us your PCT application number.
- pay us the required national phase entry fee.
- provide us with an Australian address for service.
- provide an English translation if the PCT applicaiton is in another language
You do not have to enter the national phase in all countries under the PCT, only those where you are seeking patent protection. You should use the time between filing your PCT application and national phase entry to check the commercial importance of your application and decide those countries where you want to enter the national phase.
Foreign patent office requirements
IP professionals can advise you of the requirements for getting patents granted in other countries. They can also arrange for patent attorneys in other countries to act for you if you decide to enter the national phase in that country.
Other IP offices can have differences in the term of the patent, its legal effect, the cost of obtaining and keeping a patent and in application procedures. Make sure that you are aware of these differences or seek the advice of an IP professional.
Patent offices in countries that do not use English as an official language expect all documents filed with them to be in a language that they accept. Getting translations of any document that you want to file with these patents offices will add considerably to your costs.
Last Updated: 30/10/2014