Have you proudly taken part in livening an innovative idea? The time, effort and dedication invested into your invention deserves to be acknowledged. You deserve the exclusive rights to commercially exploit your invention.

What if a patent already exists in an overseas trade market? Are you worried that an existing patent overseas will bar your chances of being successfully granted a patent for your invention in Australia?

Applying for a patent is an important and difficult process, LawPath recommends seeking advice from a patent attorney.

What is a Patent?

According to IP Australia, a patent is a legally enforceable right for a device, substance, method or process that you have created. For more information regarding what is a patent, why you should patent and the types of patents available, check out our article ‘What is a Patent?’

Who Grants a Patent?

IP Australia is the national government agency that administers intellectual property (IP) rights in Australia. They are responsible for assessing your patent application and subsequently granting the patent for your invention.

The assessment of your patent application with IP Australia is influenced by the operation of the Patent Co-Operation Treaty (PCT) to which Australia co-signed in 1980.


The Treaty

The PCT is an international treaty that streamlines the patent application process within overseas trade markets. Applying for a patent through the PCT for inventions intended to be commercialised in the markets that are signatories to the treaty is equivalent to lodging a separate patent application within each market.

Applying for a patent under the PCT? LawPath recommends seeking advice from a patent attorney.

An Existing Overseas Patent

If the overseas patent was granted under the PCT, it would be enforced within the Australian jurisdiction. Hence, the success of your patent application will be highly unlikely.

However, if the overseas patent was granted by its respective domestic government authority and not under the PCT, your chances of a successful patent application would be less slim. Even though the overseas patent would be unenforceable within the Australian jurisdiction, it may impede one of the three criteria considered by IP Australia when assessing your patent application – namely, the requirement that the invention is ‘new’. This assessment depends on a range of factors surrounding your application and the overseas patent.

Want to be advised of the likelihood of your patent application when an overseas patent exists? LawPath recommends seeking advice from a patent attorney.

Don’t know where to start? Contact a LawPath consultant on 1800 529 728 to learn more about customising legal documents, obtaining a fixed-fee quote from our network of 750+ expert lawyers or to get answers to your legal questions.

Zachary Swan

Zac is currently Head of Content at LawPath, Australia’s largest and fastest growing online legal platform. Since joining LawPath, Zac has assisted 1000s of startups and small business’ with their legal needs.