27 Apr, 2016

How Long Does it Take to Obtain a Patent?

The time required for a patent to be granted will depend on the registration procedure and a number of other factors that will vary from country to country.

Phoslock Environmental Technologies (PET) lodged a patent application under the Patent Cooperation Treaty (PCT) – International Patent Application No. PCT/AU2013/001479 – with the intention of extending the core PHOSLOCK technology until 2033.

The PCT is an international treaty with more than 148 Contracting States. The PCT makes it possible to seek patent protection for an invention simultaneously in a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications. The granting of patents remains under the control of the national or regional patent offices in what is called the “National Phase”.

The PCT procedure includes:

Filing: you file an international application with a national or regional patent office, complying with the PCT formality requirements, in one language, and you pay one set of fees.

International Search: an “International Searching Authority” (ISA) (one of the world’s major patent Offices) identifies the published patent documents and technical literature (“prior art”) which may have an influence on whether your invention is patentable, and establishes a written opinion on your invention’s potential patentability.

International Publication: as soon as possible after the expiration of 18 months from the earliest filing date, the content of your international application is disclosed to the world.

Supplementary International Search (optional): a second ISA identifies, at your request, published documents which may not have been found by the first ISA which carried out the main search because of the diversity of prior art in different languages and different technical fields. International Preliminary Examination (optional): one of the ISAs at your request, carries out an additional patentability analysis, usually on an amended version of your application.

National Phase: after the end of the PCT procedure, usually at 30 months from the earliest filing date of your initial application, from which you claim priority (21 December, 2012), you start to pursue the grant of your patents directly before the national (or regional) patent offices of the countries in which you want to obtain them.

PET’s International Patent Application No. PCT/AU2013/001479 is currently in the National Phase. PET has nominated over 50 countries under the National Phase, of which 38 are covered by the European Patent Office (EPO). The EPO grants European patents for the contracting states to the European Patent Convention. The EPO provides a single patent grant procedure, but not a single patent from the point of view of enforcement. Hence the patents granted are not European Union patents or even Europe-wide patents, but a bundle of national patents.

The National Phase will vary from country to country and depend on a number of factors including workload and queue of each patent office, type of examination of the patent and any questions that may arise. In countries where English is not the primary language everything needs to be submitted in the language of the country and all questions and queries will require translation, along with PET’s reply.

PET is represented by Ahearn Fox, a leading Australian Intellectual Property (IP) legal firm, who have engaged correspondent IP legal firms in each jurisdiction to file appropriate paperwork in each country. Ahearn Fox advise that the National Phase will take a further 6-18 months with some patent confirmations received early and others will take longer periods due to factors such as workload and queue of patents to be examined.