Foreign patent protection can be very expensive and might not be the best choice for every startup. However, there are good reasons to consider international patents, and strategies exist to help manage the costs.
When Should You Start Planning for Foreign Patent Protection?
Ideally, you should begin planning for foreign patent protection when you file your initial provisional or nonprovisional patent application. Your U.S. patent strategy will need to be adjusted if you plan to seek international protection.
At the latest, you should start evaluating your foreign patent options within nine months of filing your provisional or nonprovisional patent application. This is crucial because, one year from the filing date, you must either submit a PCT application or file in each country where you want patent protection. Make sure you give your patent attorney enough time to handle these filings.
What Are the Costs of Foreign Patent Protection?
Each application can cost a few thousand dollars. When you file in multiple countries, the expenses add up quickly. Additionally, if your applications are rejected, the costs can climb to over ten thousand dollars due to the need for additional responses and arguments. However, there is a strategy to lower these costs.
There isn’t a single global patent that covers every country. For example, to protect your invention in China or Europe, you’ll need to file separate applications with the China National Intellectual Property Administration and the European Patent Office.
Below, I’ve outlined strategies to help minimize these costs. For example, one way to delay the cost to file in each separate country is by filing a Patent Cooperation Treaty application, as discussed below.
Default Strategy for Foreign Patent Protection
The default strategy for foreign patent protection is to file a PCT (Patent Cooperation Treaty) application within one year of your first filed provisional or nonprovisional patent application. The PCT application doesn’t become a granted patent; rather, it extends your timeline, allowing you to delay filing in individual countries for up to 30 months from your earliest application date.
Without the PCT application, you’d only have 12 months from the filing date of your first application to file in foreign countries. With each country costing a few thousand dollars, the costs can add up quickly.
During the 30-month period, your goal should be to secure business partners in the countries where you want patent protection. If you don’t establish these relationships, it might not make sense to further pursue foreign patents in those countries. However, if you do find strong partnerships, you should consider seeking patent protection in those countries.
Which Countries Should You Get Patent Protection In?
Generally, you should seek patent protection in countries where your customers are located. Focus on countries where you expect to have a significant customer base. For example, if you’ve developed a surfing invention, landlocked countries might be less relevant, while countries around the equator might not be ideal for snowboarding inventions.
You should also consider how feasible it will be to enforce your patent in each country. For instance, while China has a large economy, enforcing patents there can be difficult. It’s important to assess whether you can realistically enforce your patent and build a business in that country. This doesn’t mean you should avoid protection in China, but these factors should be considered in your decision.
You might also consider patent protection in countries where your product is manufactured. For example, since China is a major manufacturing hub, securing a patent there could help you prevent other manufacturers from copying your product. However, keep in mind the challenges of enforcing your patent.
Ultimately, there’s no one-size-fits-all approach to choosing where to seek patent protection. I recommend scheduling a consultation with me to explore your options in more detail.
How to Minimize Costs When Securing Foreign Patent Protection
The most significant expense in obtaining foreign patents often comes from negotiating (i.e., responding to office actions) with patent examiners to secure allowance. While filing each patent application may cost a few thousand dollars, addressing rejections from examiners can drive costs above ten thousand dollars.
To minimize these costs, my basic strategy is to first secure allowed claims in the United States and then use these claims in foreign countries. Since you only have 30 to 40 months to accomplish this, time is limited. If you’re serious about foreign patent protection, I suggest filing a nonprovisional application and expediting the examination process. This way, you can secure allowed claims in the U.S. that can be used in foreign countries before the 30 to 40-month deadline.
Once you have allowed claims, you can introduce them in foreign countries under the Patent Prosecution Highway (PPH) program when the time is right. The PPH program allows patent offices in different countries to rely on the examination conducted by another country’s patent office. For example, if you secure allowed claims from the United States Patent and Trademark Office, the European Patent Office may allow those claims in a European patent application.
By using this approach, you can save tens of thousands of dollars and streamline the process of securing patents in multiple countries.
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Answers to Your Basic Patent and Trademark Questions
This article is one article in my series titled Answers to Your Basic Patent and Trademark Questions which explains answers to the basic questions when you are seeking patent and trademark protection for your product. The articles relate to different basic issues you will encounter as you go through the patent and trademark process.
Patents
- Should I Patent My Idea?
- How to Create a Strong Patent?
- Should You File a Provisional or Nonprovisional Patent Application?
- Should you expedite your nonprovisional patent application?
- Strategies for Cost-Effective Foreign Patent Protection
- When Should You File a Patent Application?
Trademarks