Updated: October 19, 2022
To obtain foreign patent protection, you must file a patent application in each and every country in which you want patent protection. However, doing so is very costly. Most inventors, for a few thousand dollars, file one PCT application to reserve their worldwide rights to file a patent application in other countries. The PCT application gives them time to market their idea and gauge international interest before spending tens of thousands of dollars in filing multiple patent applications in multiple countries.
What's the process for obtaining worldwide patent protection?
For many inventors in the United States, the typical route to worldwide patent protection is to file a patent application in the United States, first. Due to various treaties, without spending money, the inventor can wait 12 months before filing the PCT application. Eighteen (18) months later, the inventor has to decide which countries to seek patent protection. Otherwise, the inventor forfeits all rights to seek patent protection.
How much does it cost to obtain worldwide patent protection?
The cost to file in each foreign country will generally be about 2/3 of your U.S. patent application cost due to varying governmental filing fees and translation costs. As a result, the aggregate cost to file in foreign countries begins to add up if you want to seek patent protection in a number of countries. In a recent filing, I was able to file a single application in about 40 countries for about $100,000.
What is my recommendation on worldwide patent protection?
Unless you have pre-existing relationships in foreign countries, it is difficult to recoup the cost of filing patent applications in other countries. As discussed above, the inventor must file in each foreign country within 30 months of the filing date of the US application. Most applicants/inventors in my experience don’t have enough market insight within thirty (30) months to decide which countries to seek patent protection.
Read more about the pros and cons of worldwide patent protection.
As such, without a good business justification, I’m generally not a proponent for worldwide patent protection.
On the other hand, your licensee or buyer of your patent application might be for worldwide patent protection. You don’t know who you will meet or where the licensee or buyer might want patent protection. For this reason, I am, in general, in favor of applicants filing a PCT application to reserve their right to file in foreign countries. This leaves your options open in the future.
PCT Application process
The PCT has been signed by most of the important countries except for a few South American countries, Taiwan, and a few other smaller economies. The PCT allows you to delay filing and costs in each member country for a total of 30 months from the initial filing of your patent application. As such, the PCT application is a popular vehicle by which inventors can preserve their right to file in foreign countries.
The application filed through the PCT may go through an examination phase but it is better to think of the PCT process as a means by which you preserve your rights to file in contracting states of the PCT for a total of thirty (30) months from the filing date of the initial U.S. filing.
Gain insights during the 30-month period
During the 30 months, you should work to gain market insight and other, country-specific details. You may find out that you have great market reception for your product in one country but not another. You may develop key business relationships with distributors in foreign countries. Also, within the 30-month period, your U.S. patent application may be examined allowing us to request expedited examination in foreign countries and to anticipate rejections in foreign countries.
Most significant countries are a part of the PCT
The PCT route only applies to those countries (i.e., contracting states) that have agreed to join the PCT. By taking advantage of the PCT process, you reserve the right to seek patent protection in all contracting states. For those countries not a part of the PCT, you must file directly in the country within 12 months after filing your U.S. patent application, if allowed. Most developed countries are part of the PCT application or allow you to directly file your patent application within 12 months of your U.S. filing date. Notable exceptions to PCT membership are Taiwan and a few South American countries
Bypassing the PCT
You may always bypass the entire system and file directly in foreign countries. The benefit of doing so is that your patent application immediately enters the queue for examination and is more likely to issue a patent faster than if you utilize the PCT process. The obvious downfall is the high upfront cost of doing so.
I invite you to contact me with your patent questions at (949) 433-0900 or [email protected]. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego, and surrounding cities.