The Critical Decision: Where To File Your Critical Minerals Patent Application?

In our previous articles, we discussed the importance of securing a priority date through a provisional application, and the key steps involved in your early commercialisation journey. Here, we turn to the next major decision that every Applicant must face: where in the world should you seek patent protection – and how do you get there?

For companies developing critical minerals technologies in particular, this question has strategic weight. The minerals themselves are typically concentrated in a relatively small number of jurisdictions, many of which sit outside the main countries that most Australian companies typically file into (the most popular being US, Europe, China, Japan and New Zealand, as discussed in our recent IPAus Report article).

As the technologies used to extract, refine, and process those minerals likely represent the most valuable IP – and are usually carried out where the minerals are found – it is imperative that enforceable patent rights are obtained in the right jurisdictions to prevent unauthorised exploitation of your invention. Getting the international filing strategy right is therefore not a box-ticking exercise, but a core commercial decision.

The 12-month window | your most important deadline

An Australian provisional patent application secures a priority date, and prior art published after this date generally cannot be used to challenge the novelty or inventive step of a subsequent complete application claiming that priority.

Additionally, that priority date is only preserved if a complete application is filed within 12 months. Miss that deadline, and the priority date is typically lost, leaving any later application vulnerable to intervening publications and competitor filings.

This means that the strategy for converting a provisional to a complete application must be decided well before the deadline arrives. The most important question is not just when to file, but where.

PCT | the default path – and its blind spots

Most applicants converting a provisional application will typically file a Patent Cooperation Treaty (PCT) application. The PCT is the international filing system that allows a single application to preserve rights in the vast majority of commercially significant jurisdictions worldwide, while deferring country-by-country costs until about 30 months after the earliest priority date. It is an efficient and well-understood pathway that provides a longer runway to assess commercial potential and priorities before committing to national phase entry.

However, the PCT is not truly global. There are 23 jurisdictions that are party to the Paris Convention – but are not PCT signatories, meaning they recognise priority claims from earlier national filings. For those countries, a complete application must be filed directly with the relevant national patent office within 12 months of the priority date. Once that window closes, the right to file in those jurisdictions is generally lost.

For most technology sectors, the non-PCT jurisdictions are commercially peripheral, and this gap rarely matters. For critical minerals, it can matter considerably.

Which non-PCT jurisdictions matter for critical minerals?

The table below sets out the Paris Convention jurisdictions that are not PCT members. Those italicised are of particular strategic relevance to the critical minerals sector, especially to copper, lithium, cobalt and rare earth metals:

These countries highlight strategically important non‑PCT jurisdictions for the critical minerals sector.

For example, Argentina, Bolivia, and Pakistan each hold vast and largely untapped deposits of lithium, copper, and rare earth elements. The Democratic Republic of Congo is currently the world’s largest producer of cobalt, accounting for approximately 70–75% of global supply. These markets are, or are becoming, central to the global critical minerals supply chain.

Recent developments in these countries make this even more pointed:

• Cobalt: DRC–US Strategic Partnership Agreement¹
• Copper & Gold: Reko Diq, Pakistan²
• Lithium: The lithium triangle – Argentina, Bolivia, and Chile³

Where is your technology most valuable? Mapping the value chain

For critical minerals technologies, the answer to ‘where should I file?’ depends critically on ‘where will my technology actually be used?’.

This requires thinking carefully about where in the value chain your invention sits – and where, as a practical matter, it can be infringed.

Patents are jurisdiction-bound negative property rights: they allow you to prevent others from doing something within a given jurisdiction, but only if that activity actually occurs there.

For example, a patent covering a refining process is only enforceable in the country where the refining takes place, or a patent covering a piece of apparatus is most valuable where the apparatus is manufactured or deployed. Accordingly, the broad subject matter of your invention has direct implications for international filing strategy.

Consider three broad categories of critical minerals technology:

• mining and extraction processes (e.g., leaching, solvent extraction, heap processing): these processes typically occur at the mine site itself. If the mine is located in a non-PCT country such as the DRC, Argentina or Pakistan, then direct national filings in those jurisdictions may be essential.
• refining and purification processes (e.g., electrochemical processing, solvent exchange, precipitation): refining typically occurs either at or near the mine site, or in a downstream processing hub. Accordingly, the same logic as above applies – the patent application needs to be filed in the country where the process is performed in order to be enforceable.
• downstream manufacturing processes and apparatus (e.g., electrode fabrication, cathode material synthesis, cell assembly): these activities are more likely to occur in technologically advanced manufacturing jurisdictions – China, the United States, Europe, Japan, or Korea – all of which are well covered by the PCT and so a PCT application may be sufficient.

A holistic view of the value chain – from ore in the ground to final product – is a good starting point for a well-designed international filing strategy.

Applicants should map each element of their IP portfolio against the points in the chain where it is most likely to be deployed or infringed, and use that mapping to determine which non-PCT jurisdictions require a direct national filing, if any.

What do you need to do, and when?

If your technology has potential relevance in non-PCT jurisdictions, there are several practical steps to take:

• Decide early. The 12-month deadline from the provisional filing date is absolute. This decision cannot be deferred until the PCT national phase – it must be made at the same time as the PCT filing decision.
• Map the value chain. Identify where each element of your technology is most likely to be deployed commercially. This is not just a legal exercise – it requires genuine understanding of the mineralogy, the processing pathway, and the likely industrial structure of the supply chain.
• Assess local requirements. Filing requirements vary by jurisdiction. Some non-PCT countries require translation of the application into the local language before filing. Others have specific formal requirements for the specification or claims. These requirements need to be confirmed well in advance of the deadline.
• Commercial impact. Do the additional costs involved in filing complete applications in non-PCT countries, as well as enforcement or monitoring of competitors in those countries, outweigh any negative consequences should your invention be worked in those countries? Or could patent rights in non-PCT countries open new revenue streams such as licensing agreements that would favour early movers into a developing country?