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[lespaul]

Im American and Im interested in possibly applying for a patent in Australia - is this possible?

Im NOT looking for an world wide protection by applying for a international patent - just a patent in Australia.

Any feedback would be great, thanks
 
Lespaul

[Simpletown]

Yes you can. You can also get priority from a U.S. or PCT application. Look at:

http://www.ipaustralia.gov.au/get-the-right-ip/patents/apply-for-a-patent/
https://pericles.ipaustralia.gov.au/ols/ecentre/content/olsHome.jsp

and then look around for a practitioner in Australia, or a U.S. firm that practices there.

[NJ Patent1]

Lespaul:  A samll but potentially important point that - if you are not already aware of it - could cause some unnecassary paperwaork later.  You typed "just in Australia".  In most (all?) situations, if the invention was made in the US, you are supposed to file in the US first and obtain a "foreign filing license" - usu granted automatically - then file elsewhere. 

[JimIvey]

In most (all?) situations, if the invention was made in the US, you are supposed to file in the US first and obtain a "foreign filing license" - usu granted automatically - then file elsewhere. 

Good point, and easy to overlook. 

Though you don't have to file a patent application to get a foreign filing license.  I've never applied for a foreign filing license without filing a patent application (since I file patent applications for a living), but I'd imagine you'd at least have to submit some sort of invention disclosure (they need to know what technology you want to export).

I also understand that there's an expedited review process so you can get your foreign filing license in a few days -- perhaps even overnight.

To the original question, I think you can file a patent application in any country that accepts patent applications. 

Regards.

[Yak]

I can't remember the answer to this.  Do you need a foreign filing license to file a PCT as the original filing. 

[MYK]

I can't remember the answer to this.  Do you need a foreign filing license to file a PCT as the original filing. 

No, but IIRC, if the invention was developed in the U.S., you must file with the US Receiving Office (i.e., the USPTO).

[NJ Patent1]

For what it is / is not worth to practitioners: Other juristictions (the UK for one) have a similar "file at home first" rule.  I once ignorantly filed a first national (not PCT) application in the US for UK inventors working in the UK.  Ooops.  Whiped the egg of my face and got a retroactive "foreign filing license" in the UK.  Embarrassing in front of client. 

[bleedingpen]

Easiest and cheapest way to get a foreign filing license is to file a provisional.

There you go Ivey- we found a use for those damn provisionals. 

[NJ Patent1]

bleeding:  They have always had a use. I use the back-side for scratch paper!  Why waste it all?    But thanks, didn't know that OIPE went that far with provis. 

[JimIvey]

There you go Ivey- we found a use for those damn provisionals. 

Fair enough.  The fee for filing for a foreign filing license without also filing an application is $200 (no small entity available).

Regards.

[lespaul]

Hi NJPatent, sorry about the delay - thanks for your input.

The whole point in filing in Australia is because what I want patented is already patented here in the US (home). I am aware that its probably easier to file here (US) then somehow "extend" it over to other countries, but this is not what Im interested in.

Thanks again for all the help on this
Lespaul

[Dazed-n-confused]

The whole point in filing in Australia is because what I want patented is already patented here in the US (home). I am aware that its probably easier to file here (US) then somehow "extend" it over to other countries, but this is not what Im interested in.

Whoops!  Hi LesPaul, I don't think anyone responding knew what exactly you were talking about until this last post.

If the gadget you want to patent in Australia is already patented here, then you can't re-patent it in Australia.  If you mean instead that you have applied in the US already, then if the date of application in the US was less than 1 year ago, you can still apply in Australia (claiming priority to your US application).

[lespaul]

Hi DazedNConfused,

So sorry about that, feel so bad for not being more clear

Thanks for your response, so if I understand correctly - its its already patented here in the US (only), then I cant re-patent it in Australia: understood.

So then, whats the purpose of getting a costly "international patent" - if any patent filed here in the US is "automatically" patented in other countries (in this case, Australia)?

My sincere apologies for the naiveness on this, Im entirely new to this whole field. 
 

[JimIvey]

Thanks for your response, so if I understand correctly - its its already patented here in the US (only), then I cant re-patent it in Australia: understood.

Not just patented.  You can't patent anything already known -- anything already publicly described, used, sold, etc.

If it's close, there are exceptions to that, and the exception vary from jurisdiction to jurisdiction.  But, if it's already patented in the US, it's probably been publicly known for a long time and is probably not patentable anywhere in the world.

Regards.

[lespaul]

Thanks Jim for your input.

So, again whats the point of international patents if things are already protected in other countries? From what I understand you need file with WIPO, et al to get "international protection".

BTW, the patent in considering is in the use and application of technology (IT) to a particular field -currently it is not being used in this *particular* fashion (to the best of my knowledge).

Again, my sincere apologies for the dumb question, this is not my field.