Fisher Adams Kelly Asia Insight: Using your Australian patent in South-East Asia

Dr Mark Egerton

For more information about patent protection contact Dr Mark Egerton

While patent application procedures in multiple countries can be streamlined by way of a single, initial patent application under the Patent Co-operation Treaty, ultimately in many cases patent protection is examined and granted country-by-country. This is particularly true in Australia, New Zealand and South East Asia which do not have a regional treaty system akin to the European Patent Convention or the African OAPI or ARIPO treaties.

However, a granted Australian patent can be used as the basis for successful examination in some South East Asian countries such as Thailand, Indonesia, Singapore, Malaysia and Papua New Guinea. Typically, patent offices in these countries will readily grant patents with claims that are the same as already granted Australian claims.

The advantage of this approach is that a patent applicant can adopt a successful patent strategy in Australia that can then be repeated throughout these South East Asian countries, thereby ensuring that the aspects of your invention that are protected are the same in every jurisdiction (uniformity of claim coverage) and reducing prosecution costs in those countries. To make this strategy feasible, prosecution and grant need to be undertaken promptly in Australia. It can be advantageous if pursuing this approach to utilise Australia’s expedited examination option. This will ensure that a granted Australian patent is obtained in time to nominate the Australian patent as the basis of examination in South East Asian countries of interest.

One note of caution is that this strategy cannot be used for patent applications in certain technology areas, particularly where the technology relates to methods of medical treatment, computer programs and business methods which are all patentable in Australia but not patentable in many South East Asian countries. For more information about what can be patented in these countries see our patent guide here.

For more information or to discuss the best and most cost-effective patent strategy in Australia and South East Asia contact our Brisbane hub office on mail@fak.com.au or +61 7 3011 2200. You can also follow all of our IP updates at www.linkedin.com/company/fisher-adams-kelly