International Patent Protection

By: Ivan T. Kirchev

Startups, entrepreneurs, and small companies must try to protect their intellectual property rights both in the U.S.and overseas. Although international patent prosecution can be a complex and costly process, companies should consider creating an international patent portfolio. Having such patent portfolio will certainly make the company more attractive for U.S. and foreign investors. If a company already has pending U.S. patent application(s), the company can seek protection of its inventions outside of the U.S. by filing foreign patent application(s). Generally, there are two ways to pursue foreign patent protection.

A company can file an application directly in each desired country or region (i.e. in Europe, Germany, China, etc.). Most foreign patent applications can be filed based on an U.S. application. As a general rule, these foreign applications must be filed within one year of the U.S. filing date in order to obtain the benefit of that U.S. filing date. Cost of foreign filing depends widely on the country and includes filing costs and the corresponding patent prosecution fees of foreign associates handling the prosecution.

Alternatively, a company can file an international Patent Cooperation Treaty (PCT) application within one year of the filing date of the U.S. application. The PCT application provides, in essence, a placeholder and opportunity to file one international application and have the patentability of the claims examined under international standards. Currently, the PCT includes 139 member states including most industrialized nations. The applicant will receive a report regarding the patentability of the claims in about six months after filing. Eventually, the applicant will have to choose specific countries in which it ultimately desires to obtain a patent. The PCT is a patent “filing” system, not a patent “granting” system. There is no “PCT patent.” The applicant can start the application or “national phase” process in any particular country that is a member of the PCT right after filing the PCT. Alternatively, the applicant can wait to receive an international search report and written opinion of patentability. Filing through PCT, instead of directly in the member countries, allows an applicant to delay “national phase” filing in these countries up to 30 months from the U.S. filing date (31 months in some cases). Generally, if company would like to have one or more patents in hand as soon as possible, it should start the national phase immediately after filing the PCT. Alternatively, if a company would like to defer costs and see what the patentability report indicates, waiting is a reasonable course of action.

There are many benefits to filing a PCT application. A PCT filing provides one application, in one language, filed with one Office that defers multiple foreign filings until entry into the national phase. The PCT application permits last-minute foreign filings and provides an international filing date. The applicant can make amendments to an application that will be in effect in all designated elected states. In addition, the applicant can better plan expenses for the national phase filings and thus can control its overall costs.

On the other hand, at the time of filing the PCT application, the applicant may also want to file national applications in countries not included in the PCT, which is a relatively small number of countries. Costs and fees for filing a PCT application are estimated around $3,000-$4,000.  Nationalizing the PCT application in the countries selected by the applicant adds additional costs which vary between the PCT member countries. The highest filing cost is with the European Patent Office (around $9,000), but a European application will give the applicant the opportunity to select many countries in Europe. Filing in other PCT countries may cost around $500-$700 per country (these are just filing costs). Prosecution fees and maintenance fees add extra cost to the application.  Below is a link to a list of the counties participating in the PCT.

http://www.uspto.gov/web/offices/pac/dapp/pctstate.html

Therefore, a company should determine its goals with respect to foreign patent protection and decide which of the above-identifies international filing options works best for its objectives and budget.

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