Category: Foreign Protection

I am often asked by inventors how they can protect their invention outside of the US. Although you can file patent applications in individual countries, probably the most common avenue is to file a Patent Cooperation Treaty (PCT) patent application.

If you file a PCT patent application, you can then enter any or all member countries individually within 30 months of the priority patent application filing date. Click here to view a world map and list of countries that are members of the World Intellectual Property Organization (WIPO).

As you can see, there are some countries that are not WIPO members. If you want to file in any of these countries, you will need to file patent applications in those countries individually prior to any public disclosure (including press releases or other publications).

The filing fees alone for filing a PCT patent application are currently about $2500. Attorneys typically charge another $500 or more for filing the PCT patent application. You will then need to file national stage patent applications claiming priority to your PCT patent application in individual countries (or the European Patent Office) within 30 months of the priority application filing date (20 months in some countries, and a few months longer in others).

Filing in individual countries gets very expensive, because you have to pay your US attorney, the foreign  attorney, and foreign government fees  for every transaction (and don’t forget the monetary exchange rates!). Filing a single national stage patent application can quickly cost several thousands of dollars. In addition, many foreign governments charge annual fees while your patent application is pending. Then to respond to foreign office actions, you will incur additional fees.

Don’t forget translation fees if you are filing your patent application in non-English speaking countries!

As you can see, foreign filing gets very expensive, very quickly. I typically do not recommend my individual or small business clients spend their money on foreign filing, unless they already have operations in a particular foreign country or reasonably foresee going into that market in the near-term. That’s because the money saved can usually be better spent pursuing their invention in the US. For example. spending that money on building, testing, and marketing their invention, instead of on foreign patent applications.

I don’t like to see anyone blow their budget on international filing, and then not have enough money to pursue their invention and end up having to walk away from it all after having made a substantial investment.

That being said, however, filing foreign patent applications is a business decision that every inventor will need to make based on their own budget and goals for their invention.

I am often asked the question “Will my U.S. patent application protect my invention throughout the world?” The answer is No. U.S. patents are only valid in the United States.

However, if you are granted a U.S. patent for your invention, that U.S. patent can be used to stop others from making, using, or selling an infringing product in the U.S. and from importing an infringing product into the U.S.

A U.S. patent will not, however, offer any protection of your invention entirely outside of the U.S. For example, a U.S. patent will not prevent others from making, using, and selling your invention in Europe, China, Japan, and so on. For that, you will need a patent issued by the foreign country’s patent office (e.g., the European Patent Office for members of the EU).

This question is usually followed by “Should I file patent applications outside of the United States?”

I never answer that you shouldn’t file a foreign patent application. But consider this:

1. What is the market for your invention? The U.S. market is one of the largest markets, if not THE LARGEST MARKET, in the world for most inventions. If you can corner the U.S. market, you’re likely going to do very well.

2. Foreign patent applications are expensive. If that’s not enough for you, then you will need to file in one or more countries outside of the U.S. These filings can be expensive – just to file a patent application in another country can cost thousands of dollars in foreign attorney fees, foreign government fees, and translation costs. Not to mention having to argue your case in a foreign patent office, and then pay issue fees to the foreign patent office.

3. Are you willing to enforce your patent outside of the United States? Foreign patents are hard for individuals and small businesses to enforce. Even if you have an issued patent in another country, you’ll have to police it. That is, you’ll have to find infringers in that other country. Then you’ll have to hire a foreign attorney to go after the infringer. Even if you win your case, you’ll have to collect your judgment, which likely means hiring a foreign collection agency.

If you’re considering filing foreign patent applications, keep in mind that most foreign patent offices have an absolute novelty requirement. That is, you cannot publicly disclose your invention at all prior to filing a foreign patent application. Contact a patent attorney right away for more information about foreign filing.