Protecting an invention in Australia and overseas is not as simple as some may think.
There is no worldwide patent. Obtaining patent protection in Australia and overseas requires filing of individual applications in each country that protection is sought. Each governmental authority examines the application thoroughly to check statutory requirements are met. Rejections are commonly raised and a successful outcome is not guaranteed. The whole process typically takes several years with numerous and non-refundable official fees payable along the way.
Luckily not all of the individual applications have to be filed simultaneously thereby allowing costs to be deferred. An applicant commences the patenting process by filing a single application. The government authority examines the application and writes a report to the applicant. Depending on the problems raised in the examination report, the applicant can decide whether or not they wish to incur additional costs through filing second and further applications in other countries.
Australian based applicants usually file their first application with IP Australia (also known as the Australian Patent Office) who is the Australian government authority responsible for examining applications and awarding patents. It must be noted that the content and quality of examination reports issued by IP Australia has improved in recent years.
Nonetheless, some applicants may receive a first examination report from IP Australia with only minor and surmountable issues raised. The applicants can then decide to file further applications overseas at significant cost only to later receive much harsher reports from equivalent authorities in Europe, China, and the USA. As a consequence, securing patent protection in those countries becomes very difficult.
One recommendation for Australian applicants would be to file their first application with either the European or US authorities and obtain an examination report from same. These authorities maintain some of the highest examination standards in the world and as a consequence the content of their reports is often persuasive on the examination outcome in other countries. Applicants would acquire a relatively better idea earlier on in the patenting timeline as to how successful their further applications may or may not be. If problems with the written application are alleged (e.g. a lack of experimental data), then such problems may be addressed in the filing of further applications. A downside for Australian applicants is an increased upfront cost through use of Australian and European / US patent attorneys as well as relatively higher government fees (especially in Europe) but the cost saving in the long run could be substantial.
Please don’t hesitate to contact me if you have any questions on the above.