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Benefits to exporters

The way the PCT differs from the similar Paris Convention Treaty is that it allows more time from the initial filing to when separate patent applications must be filed in international countries, while still giving the same protection. The Paris Convention Treaty only allows a period of 12 months in which to decide whether to go ahead, whereas the PCT allows up to 30 months to decide whether an invention is worth protecting internationally.

Ward explains it as a safety net for innovators wishing to analyse or refine their product before sinking substantial amounts of money into protecting it. “Because it buys you two-and-a-half years before you have to enter the most expensive step, it allows you to weed out the dead wood, otherwise you have to commit too early and then you get all bitter and twisted because you’ve spent all this money and it’s been a waste of time.”

While an invention is protected if the PCT application proves successful, Ward warns that it can take many years before damages can be sought from imitators or rivals. “You can’t enforce a patent until it’s granted, and it’s not granted until you enter the national phase and have it examined, so that can take another two or three years,” he explains.

“However, you can get damages back to the date of publication, which can often be many years before the patent is granted. For example, if you’ve lodged your application in 2005, your PCT in 2006, you enter the national phase in 2008 and the patent is granted in 2010, you can’t initiate court action until 2010 but you can claim damages back to the publication date which would be somewhere between 2006 and 2007.”

One of the main advantages of filing for an international patent application using the PCT system is that it helps to stagger the fees and charges that lay in wait. “A decent-sized patent filing might cost you around $50,000 in total. The dilemma is that if you’re spending $50,000 on an international filing portfolio [through the Paris Convention system], you’d have to spend it within 12 months and it’s too early. Sometimes the invention isn’t even fully developed,” Ward explains. “The beauty of the PCT system is that the A$50,000 expenditure is deferred for two-and-a-half years. That gives applicants the opportunity to decide whether they’re onto a winner or not.”

What you need to know

Some countries define patentable subject matter differently, which means exporters must be aware of the regulations of each of the countries they are making applications to. “When you enter the national phase, particularly in places such as Europe, there might be a problem with things like computer software. Some countries have quirky rules that don’t allow certain subject matter to be patented, but the PCT has no such rules,” Ward says.

Contact IP Australia (www.ipaustralia.gov.au) or WIPO (www.wipo.com.au) for more information on the PCT system and application procedures in Australia.