The answer to this question assumes that the foreign country is one of the ~170 countries that are signatories to the Paris Convention. It also assumes that the overseas company’s foreign application doesn’t make a priority claim that is earlier than your own.
In general, so long as you take steps to file a patent application in the foreign country, within twelve months of the date you first filed a patent application for your invention here and claim priority from your original filing, then your foreign patent application will have an earlier priority date than the overseas company’s. Therefore, the overseas company’s application won’t pose a barrier to your foreign patent application.
However, the situation becomes more complicated if the oversease country in question is the USA because the USA used to have a first to invent patent system rather than the first to file system in place in the rest of the world. Consequently, the owners of older US patent applications may have prior rights due to an earlier “conception” of the idea even though they filed later.
When a patent application is examined it is checked to see if the invention that is being claimed is new and involves an inventive step when compared to the prior art base. The prior art base is basically information that was in the public domain, anywhere in the world and in any language, up to the date that the patent application was filed. So, the later the patent application’s priority date, the larger the prior art base will be and the greater the risk that the invention will have already found its way into that prior art base.
This is why it can be risky to unduly delay filing a patent application for an invention.
When you first file a patent application for a particular invention, the date that the application is lodged with the Patent Office becomes the application’s priority date. In some circumstances it’s possible to file a subsequent patent application, for the same invention, so that the subsequent patent application retains the priority date of the first patent application.
This can happen when a provisional patent application is filed as a first application and then subsequently a standard patent application is filed within one year claiming association from the provisional patent application.
Another common situation is when a first patent application for an invention is made in a Paris Convention country and then subsequently the owner of the first patent application files subsequent patent applications in one or more other Paris Convention countries within one year of the first filing.
A patent application consists of:
1. A patent request form, which includes details such as the identity of the applicant for the patent and the inventor, the title of the invention for which patent protection is sought and the details of any earlier patent applications from which priority is claimed; and
2. A patent specification, which is a technical and legal document that describes the invention and sets out the scope of the exclusionary patent right that is sought. Unless the patent specification describes a pharmaceutical or chemical invention then it will almost always include drawings. If the patent application is for a standard or an innovation patent then the patent specification must end with a set of patent claims. If the patent application is for a provisional patent application then the patent specification isn’t required to end with a set of claims. So you see, a patent specification is the part of a patent application that describes and claims the invention.
Since most attention is focused on the patent specification during examination of a patent application, people often tend to refer to the patent application and the patent specification as if they were the same thing.
When a patent lapses, its owner loses the exclusive right to the invention, i.e. the right to stop others from making, using, importing into, or otherwise exploiting product according to the invention in the country where the patent was granted. If someone else starts to exploit the invention then the owner of the lapsed patent is unable to enforce the now lapsed patent right. However, take care because:
1. It’s possible to have lapsed patents reinstated in some circumstances
2. Someone else may have an earlier, unlapsed, patent that is in force and which has claims that are sufficiently broad to cover the invention; and
3. There may be other intellectual property rights associated with the invention that haven’t lapsed. For example, design registrations that protect the visual appearance of the product or copyright that protects software that the product uses.
The day you file your patent application the content of the application is officially recorded along with that day’s date, which becomes the official filing date. The application is then accorded an application (or ‘serial”) number and any earlier priority date that you claim in your application is officially noted. All of these actions are necessary for your application to be recognised in the ‘queue” at the Patent Office so that it has priority for the granting of a patent over some one else’s later filed application for the same invention. So to that extent you are protected in that a person applying after you, with a later priority date claim, won’t usurp your place in the queue.
Filing a patent application won’t give you any standing to sue anyone else for patent infringement until a patent has actually been granted. You can’t launch patent infringement proceedings unless you have a granted patent.
As mentioned above, when you first file a patent application for a particular invention, the date that the application is lodged with the Patent Office becomes the application’s priority date. It’s then possible, within one year of the original patent application filing, to file a subsequent patent application, for example an overseas patent application claiming the priority of the first filed patent under the Paris Convention.
Now it may be that after filing the first patent application, and before filing the overseas patent application, you have come up with an improvement to the invention that wasn’t described in the first filing. In that case a second patent application, for example a provisional patent application, may be filed describing the improvement. The overseas application would then claim priority from both the first patent application and also claim priority from the second application and the patent specification of the overseas application would describe and claim the material in both the first and second applications. The second patent application is effectively an updating provisional application because it updates the invention description of the first patent application.
No, provisional patent applications don’t ever get examined. They are simply filed with IP Australia and accorded a priority date and Australian application number. Provisional patent specifications are kept on file for thirty years before being destroyed.
The purpose of provisional patent application is to stake a claim, priority date wise, for a subsequent complete patent application. It’s the complete patent application that will actually be examined.
Before you settle on a name it’s very important to check that no one else already has rights to the name, in particular, registered trade mark rights. Be sure to check that the name you have in mind won’t conflict with some one else’s trade mark registration, or existing trade mark application, before you go to the trouble and expense of paying for signage, stationery, website development etc for your new business. Searches of the IP Australia trade mark database can be performed to gauge the risk of an infringement arising. Working out whether or not there is a risk of infringement arising can be difficult and you should seriously consider having a trade mark attorney advise you.
The consequences of not performing preliminary clearance searching can be very serious. If you go ahead with the name without checking and it turns out that you do infringe someone’s pre-existing trade mark rights then you may end up having to pulp your stationery, take down your signage and possibly even give up your domain name.
It’s also possible to infringe other people’s unregistered trade marks under the common law tort of Passing Off and to fall foul of the Competition and Consumer Act 2010 (which has replaced the old Trade Practices Act 1974) if you choose a name that causes customers to be mislead into thinking that you’re associated with another business of the same name. Searches of the Yellow Pages and Internet search engines, for example, can help to gauge whether or not there are other businesses trading with the same name in the same goods or services.
You should also be aware that not every name or logo is registrable as a trade mark even if no one else has already registered it in their own name. In particular, if your name or logo is directly descriptive of the services or goods that you trade in , then it’s likely to be difficult, if not impossible to obtain trade mark registration. I have written an article about selecting distinctive trade marks to help people understand and avoid this problem.
Unless you will be trading under your full name, your name including middle initials or your registered company name, then you must register your business name with ASIC. If someone else already has the trading name registered as a business name then ASIC may decide not to register it, in which case you won’t be able to legally trade under the name whether or not you have a trade mark registration.
So, before investing in signage, domain names, websites, stationery etc, based on your new business name:
1. Check if the name you’re considering would be at risk of infringing anyone else’s pre-existing trade mark rights.
2. Apply for business name registration with ASIC and wait to see if it is accepted before adopting the name.
3. Choose a name that has good prospects for being registered as a trade mark.
4. Perform searches, including Yellow Pages, ASIC company name and Internet searches to gauge if the name you’re considering would conflict with someone else’s unregistered trade mark rights.
5. Assuming that you have selected a distinctive name, which is recommended, then seek trade mark registration.