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By February 21, 2011IP Insights

Mechanisms To Delay Filing Patent Applications in Overseas Countries

Inventors often like to seek patent protection for their invention in as many countries as possible.  However, the filing of patent applications in multiple countries can be expensive.  Furthermore, there are ongoing costs in maintaining and prosecuting these applications.  Consequently, many inventors prefer to delay incurring these costs for as long as possible but still retain the option of filing patent applications in desired overseas countries.

There are a number of mechanisms in which to delay the incurring of expenses in filing multiple overseas patent applications.

A first mechanism is to prepare and file a provisional patent application in respect of the invention.  A provisional patent application is the cheapest of patent applications to prepare and file and provides the inventor with a period of 12 months to determine the countries in which they would like to pursue patent protection.

A second mechanism is the preparation and filing of a PCT patent application which is an international patent application that serves to postpone the filing of national patent applications in overseas countries.  This second mechanism can be used in conjunction with the first mechanism.  The inventor can delay the filing of national patent applications in overseas countries for up to 30 months from the priority date.  During this time, the inventor has the opportunity to work out which markets they wish to pursue and in which countries they wish to obtain patent protection.

A third mechanism available to an inventor who has filed a PCT patent application claiming priority from a provisional patent application or other priority patent application is to withdraw the priority document thereby effectively delaying the filing of national phase applications by up to a further 12 months.  There are inherent risks in withdrawing the priority document as new prior art is introduced and one or more of the introduced prior art documents may affect the patentability of the invention.  The third mechanism is useful however where it is necessary to balance the patentability risk with the commercial reality regarding the invention.

If you would like to know more about obtaining patent protection in Australia and in overseas countries, Wynnes Patent and Trade Mark Attorneys are happy to discuss these matters further with you.

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