Updated January 20, 2022
FOREIGN PATENT FILING
To secure patent protection in other countries with a foreign patent filing, inventors must file a patent application prior to public disclosure of the invention to others. Public disclosures come in the form of websites, offers to sell, investment solicitations, tradeshows, public demonstrations, message boards, and other situations where information on the invention is distributed without any (written) obligation to keep the information secret. These disclosures arise in typical marketing efforts by startups.
ABSOLUTE NOVELTY
If you start your marketing efforts before filing a patent application, then in most foreign countries, you cannot seek patent protection with a foreign patent filing. Many foreign countries require absolute novelty for you to seek and be granted a patent. Absolute novelty requires no disclosure, anywhere in the world, before filing an application for a patent on the invention.
RELATIVE NOVELTY
In the United States, you may start to market your idea prior to the filing of your patent application. However, the United States is an exception to the absolute novelty requirement of most other foreign countries. The U.S. is a relative novelty country in that it allows public disclosure of the invention for a limited period of time (i.e., one year) prior to the filing of a patent application. However, due to the first to file rule, publicly disclosing your invention prior to the filing of the patent application is highly discouraged and not recommended.
PATENT COOPERATION TREATY (A.K.A. PCT APPLICATION)
To seek foreign patent protection with a foreign patent filing, a patent application is typically first filed in the United States. However, there are situations where you may want to file in foreign countries first or to file a Patent Cooperation Treaty (“PCT”) application first. After the filing of the U.S. patent application, you have twelve months to decide which countries (e.g., Canada, China) or regions (e.g., Europe) to determine which countries to submit a foreign patent filing and must then timely file a corresponding patent application in those individual countries or regions.
The cost to file in each of those individual countries or regions will cost about the same as the cost to prepare and file your U.S. patent application. As such, it is expensive to file directly in foreign countries at the end of the 12 month period. Moreover, most inventors and companies have not yet decided which countries they would like to enter within twelve months. As such, many entities choose to file a PCT application. Larger entities with established distribution channels may choose to file directly in known countries of interest.
As indicated above, a PCT application or Patent Cooperation Treaty application is a patent application filed under a treaty that delays the 12 month period deadline another 18 months. Even though there is an “examination” phase in the PCT process, it primarily functions to extend the 12-month deadline out another 18 months. Hence, with the filing of the PCT application, a patent applicant can delay the filing cost to file in any PCT member country for a total of 30 months from the date of the first-filed patent application.
CONCLUSION: FILE PATENT APPLICATION PRIOR TO START OF MARKETING EFFORTS
The bottom line is that, in the beginning, preserving one’s ability to seek foreign patent protection does not cost more. All that is required is that one file a patent application prior to any sort of public disclosure or marketing efforts. Moreover, this pre-marketing filing strategy is already the recommended course of action due to the implementation of the first to file rules under the America Invents Act.
I invite you to contact me with your patent questions at (949) 433-0900. 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.