Your Guide to the International Patent Protection Process
If you’re an Australian business owner with a game-changing invention, here’s the harsh truth: staying only within the borders of Australia might not cut it.
If you’ve got an innovation that’s worth protecting, then you’re in for a journey because going international means real stakes, real strategy, and a whole lot of upfront thinking.
In this guide, I’ll break down the international patent protection process into bite-sized steps to help you decide if this is the right move for you.
Why Even Bother with the International Patent Protection Process?
Imagine this: You’ve just launched your new product, and you’re seeing orders trickle in.
Then, suddenly, a big overseas competitor copies your product, slaps their brand on it, and floods the market. All because you didn’t protect your IP outside of Australia.
The international patent protection process gives you the legal muscle to prevent copycats in key markets.
This protection isn’t cheap or easy, but if your invention has that kind of potential, patent protection overseas shouldn’t be ignored.
Step 1: Decide if Going Global Is Right for You
Let’s start with a dose of reality. The international patent protection process isn’t for everyone. It’s costly, takes time, and demands resources. Here are three key questions to ask:
Are you planning to sell or license your product abroad?
Is the potential revenue in those markets big enough to justify the cost?
Could someone copy your invention overseas and damage your sales or reputation?
If the answer to any of these is a big “YES,” then it’s worth digging deeper.
Cost-Benefit Analysis: Is It Worth the Investment?
Filing internationally can set you back tens of thousands, even hundreds of thousands, depending on the number of countries and complexity of the filings.
Run the numbers.
Compare the costs with the potential income from these markets. The ROI needs to be obvious because once you start down this path, it’s a serious financial commitment.
Step 2: The Two Routes in the International Patent Protection Process
You’re probably wondering how this whole international patent protection process works.
Typically, after filing your provisional patent application with IP Australia, you will have 12 months to pursue overseas protection via the following two routes:
1. The Patent Cooperation Treaty (PCT)
For many businesses, the PCT is a godsend.
File once under the PCT, and you’ll get an additional 18-month window before committing to individual countries (or “entering the national phase,” in patent-speak). That’s more time to get funding, fine-tune your product, and decide where you want protection.
Personally, I’ve seen clients who thought they only needed Australian protection decide, halfway through this process, to go overseas. The PCT option gave them time to re-evaluate their international ambitions. If you’re on the fence, this option buys you some breathing room.
2. Direct Filing in Each Country
This approach is straightforward and no-frills: pick your countries, file directly in each one. There’s no middle step or extra time like the PCT, but if you know exactly where you want protection, it can be faster and cheaper.
Direct filing might make sense if you only need a few countries. For example, if your sole markets are Australia, New Zealand, and the US, skip the PCT and just file directly.
Step 3: Choosing Your Target Markets Strategically
This part is where business meets reality.
You can’t file everywhere (unless cost is no barrier), so focus on markets where it’ll pay off. Here’s a cheat sheet for picking your key markets:
Follow the Money: Look at countries where your biggest customers are or where sales volume could spike.
Manufacturing Bases: If you’re outsourcing production, protect yourself in that country. China, for example, is both a major manufacturer and a hotbed for IP disputes.
Competitors’ Locations: If your competition is big in the US or Europe, consider protecting there. The last thing you want is for a competitor to have free rein in their stronghold.
Step 4: The Step-by-Step International Patent Protection Process
Once you’ve chosen your markets and method, it’s time to file. Here’s how the international patent protection process could break down:
1. Conduct a Patent Search and Market Analysis
Before you even start filing, do your homework. A patent search will show you who’s already in your space, and a market analysis will reveal if your product has legs in those countries.
2. File Your Australian Patent First
Securing your priority date with an Australian provisional patent application can be a smart move. It gives you a foundation and a priority date to build from.
3. File Under the PCT (If You’re Going That Route)
This is known as the “international phase.”
You’ll get an international search report that can give you insight into your patent’s potential strength in other countries.
4. Enter the National Phase
After the international phase, it’s time to go local.
This step involves filing individual patent applications in each jurisdiction of interest.
Be prepared: this is the phase where costs can skyrocket, depending on the jurisdictions you select.
Step 5: Managing the Costs in the International Patent Protection Process
I won’t sugar-coat it: the international patent protection process is expensive. But here’s a quick breakdown:
Initial Filing Costs: Budget for fees in Australia and the PCT application if you go that route. A PCT application can set you back anywhere between $6K to $12K.
National Phase Entry Costs: These fees vary wildly from country to country. And don’t forget translation costs—patents filed in Japan or China, for example, will require full translations.
Prosecution Fees: You’ll need cash in the bank to cover patent examination costs. Patent Offices around the world are prone to raise initial objections which your patent attorney can help you overcome.
Maintenance Fees: Patents need upkeep. Each country will charge renewal fees, so make sure to factor those in for as long as you want protection.
Overseas patent protection: is it right for you?
The international patent protection process isn’t a one-size-fits-all solution.It’s an investment, and the payoff depends on your business’s goals, budget, and growth trajectory. But if you’ve got something worth protecting, expanding your IP footprint internationally can set you up for serious long-term success.
Whether you’re just starting to explore this or are ready to take the plunge, consult an experienced patent attorney. This isn’t the place to “wing it.”
With the right strategy, international patent protection can become a valuable asset for your business, not just an expense.
So, weigh your options and budget wisely if you intend to protect your hard work overseas.
