In today’s globalized world, competition can come from anywhere, and copycats can too. This article will explain the stakes, strengths, and costs of international patent filing, including:
- The steps required to obtain patent protection internationally for your product.
- The advantages of international patent filing in today’s world.
- The disadvantages, including the costs, of filing for patent protection internationally.
Applying for patent protection is expensive and time-consuming, even in the United States. But the process becomes even more expensive when you apply for patent protection internationally. To obtain a patent in any particular country, the applicant must engage with the patent office of that country in accordance with that country’s laws. This is because every country has its own policy goals with regard to technological innovation and IP protection, hence a patent applicant must navigate through the necessary steps mandated by each country’s legal requirements. This is unlike trademarks, for which different countries have similar goals in protecting consumers. An applicant cannot obtain patent protection across different countries by simply clicking on buttons and paying a fee as he can for trademark registration.
What Are The Options For Filing An International Patent Application?
If you want to protect an innovation or idea from others trying to copy or use it, you will need to get a patent. Unfortunately, just because you have a patent to protect your mechanism or design in the United States does not mean it will be safe abroad.
For that, you need one or more international patents, though the term itself is misleading. In truth, there is no such thing as an international patent. These are simply patents you file internationally to protect your ideas in one or more foreign countries.
Once you have filed a patent application in one country, the subject matter is no longer considered novel by other countries. That is, your patent application will not be allowed for lack of novelty in other countries, unless you file in all of your targeted countries on the same day. If you are not able to file in all of your targeted countries on the same day, or you are not sure which countries to target for patent protection, you may use one of the following methods to apply for patent right internationally:
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Filing a Foreign Patent Application Based on a US Application
One who plans to file a patent application in a foreign country may do so after initially filing a patent application with the United States Patent and Trademark Office (USPTO), or with the patent office of another country. If you already know which foreign country (or countries) you want to apply for patent protection, you may file a corresponding patent application in that foreign country using your US patent application as a priority application, albeit within one year of the filing the initial US patent application.
Be careful, however. If you have applied for a provisional application for your US application, the provisional filing date is the priority date such that the one-year deadline starts from the filing date of the provisional, not the filing date of the official, non-provisional US application. Therefore, if you have applied for a provisional patent and want to get protection in a particular foreign country, you must file the corresponding foreign patent application within one year of the provisional filing date.
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Filing a Foreign Patent Application Based on a PCT Application
As mentioned, it is very expensive to apply for patent protection internationally (more than $10,000 for each country.) Applicant needs to consider carefully before committing to filing for patent protection in any particular foreign country. One year from the earliest priority date may not be enough time.
The Patent Cooperation Treaty (PCT) is an international agreement that facilitate patent filing internationally. Specifically, by filing a PCT application, the applicant is allowed two and half years from the earliest priority date before actually filing in any foreign country. This is one and half year of additional time compared to foreign filing based on US application. The applicant can use the additional time to decide whether to file and which country (or countries) to file for patent protection.
Another advantage of the PCT application is that it provides a preliminary search conducted by an international search authority. This search report will help you determine if the patent application is viable or if pursuing it might be a waste of money and time.
PCT application is expensive, costing $4,000 to apply, but it may well save you time and money in the long run.
Unfortunately, PCT is not available to every country in the world, including some countries that may be important for patent protection. Thus, for example, if you wish to apply for patent protection in Taiwan, which is not part of PCT, you can only do so by either filing in Taiwan directly or by filing within the one-year window based on the earliest priority date.
Attorney John Lin is a diligent California intellectual property lawyer whose first decades of work were in the tech and engineering sector. Armed with firsthand knowledge and his unique insider perspective he knows the US and international patent filing sectors inside and out; fluent in several languages including Mandarin Chinese, he makes the complex field of patent law accessible and available to all.
Are you worried about competitors copying your product internationally? Want to file for protection in another region? Contact John Lin today to schedule an initial consultation.
What Are the Advantages Of Filing Internationally For Patent Protections?
A patent can stop someone from making, using, copying, or profiting from your product without permission. For example, if you know your competitor is primarily manufacturing in China, it could be useful to get patent protection in China to stop them from producing there.
Alternatively, you might be concerned about where your product will mostly be sold, for example, in Europe. If you obtain a patent in Europe, copycat products cannot be sold there.
With your patent granted by a particular foreign country, you can stop production or sale or any other critical step in the product’s life cycle happening in that country. Since you can choose the country or countries that fit your strategy, the international patent application process can be broad or targeted based on the marketing need of your products.
What Are The Disadvantages Of Filing For Patents Internationally?
Cost is always a significant disadvantage: patent filing, especially internationally, is expensive. If you end up applying in a country where your product will never be manufactured or sold, you are just wasting money.
That is why it is important to be selective about the countries where you choose to spend your IP budget.
Is It Ever A Good Idea To Patent In As Many Countries As Possible?
Though it is very expensive to apply for patents in multiple foreign countries, there are instances in which it is advantageous to do so. For example, if your patent covers an aspect of a technology standard that is widely accepted across the world, then having corresponding patent protection across many countries can yield royalty returns that easily justify the cost of filing those foreign patents. Certain technology standards, such as video coding, have international bodies that apportion royalties to patent owners based on the number of patents that covers the standards. Each patent, regardless of country, may count as an additional point in the patent owner’s favor during royalty distribution, so you may want to get patented in more countries to maximize your potential earnings.
However, this is the exception to the rule, as you are generally better off filing in only the countries where you need to make, buy, or sell the product.
What Is The Typical Timeline When Filing A Patent For Other Countries?
The time it takes to apply for patents internationally can vary widely depending on the methods and countries involved. Without PCT, you must file in your target foreign country or countries within one year of your earliest priority date. With PCT, you have two and a half years from the earliest priority date to file in your target foreign country or countries.
Once you file, you must wait for the relevant government authority to examine your patent application. Some countries are fast, taking just a year or two to approve; others are slower, taking five, six, or even seven years. The examination may take many iterations between your representatives and the foreign patent office, incurring fees along the way.
Thus, if you want your innovation to be fully protected, even internationally, you should reach out to an experienced patent and intellectual property attorney. They will help you secure the patent protections you need and avoid unnecessary costs.
For more information on International Patent Filing For Tech Startups, an initial consultation is your next best step. Get the information and legal answers you are seeking by calling (949) 844-5505 today.
Attorney John Lin is a diligent California intellectual property lawyer whose first decades of work were in the tech and engineering sector. Armed with firsthand knowledge and his unique insider perspective he knows the US and international patent filing sectors inside and out; fluent in several languages including Mandarin Chinese, he makes the complex field of patent law accessible and available to all.
Are you worried about competitors copying your product internationally? Want to file for protection in another region? Contact John Lin today to schedule an initial consultation.
