International Patent Protection

There are two general paths to getting foreign patents.  The best choice for your case may be a mix of the two.  All routes lead to the same goal -- getting a patent in each country in which protection appears worthwhile.

Path 1: File directly in each country.

Why take this route?

  • Universality -- It works everywhere, assuming you file all the applications (including the US one) at about the same time. It works almost everywhere that most people are interested in even if there is a delay of up to a year between the original US filing and the corresponding foreign filings. Some countries are not adherents to an 1878 treaty called The Paris Convention. For these, the one year grace period is not available and filings have to be made before the invention is publicly disclosed.
  • Speed -- This is the fastest way to get a patent issued in any given country.
  • Efficiency – Generally only a few countries are involved, so this approach has the lowest overall cost.

 What's wrong with it?

  • Duplicated prosecution --  If an examiner in country X cites a patent by Doe and Roe against your application, chances are that the examiner in country Y will cite it too.  The same arguments will have to be sent by your local patent agent or attorney to the patent counsel in each country for presentation to each examiner.
  • Upfront costs -- A complete application must be prepared in each country.  This involves expensive translations, redrafting parts of the application to fit  the requirements of each patent office, etc.

Path 2: Start out in an international office.

There are two international arrangements that are usually considered: the European Patent Office (which covers most of the countries of western Europe); and the PCT process (which covers most of the world's countries). The two are not mutually exclusive -- the EPO can be chosen as a "country" in the PCT process so that after the PCT prosecution is done, the application is re-processed in the EPO. There are also other regional offices, but they are not used as extensively as the EPO and PCT.

Path 2 has a number of variations.  One that is frequently selected is to have a search done under the PCT proceeding and to then file for examination in a designated country's patent office.  Another variation is to carry the case through a preliminary PCT examination before moving on to the EPO or a national  patent office.

 Why take this route?

  • Deferring  costs while you decide just where you want to get patents  -- As a rule of thumb, each country has roughly equivalent patent costs (except for the US, Canada, and a few others that give discounts to individuals and small companies).  These costs are high enough that maintaining a patent "everywhere" is almost unheard of.  Sooner or later, the initial list of countries where protection is desired gets trimmed down.  Filing a PCT application allows these decisions to be made about 30 months after the original filing, when the inventor has a better estimate of how much the patent is likely to be worth.
  • Prosecution simplicity. --  In regional offices like the EPO a single examination process generally leads to claims that are accepted by all the countries being covered.
  • Single representative --  In most countries your local patent agent or attorney can represent you in PCT proceedings. However, if you are seeking a patent from a regional office (e.g., EPO) and you are not a resident of one of the countries in that region, representation by a regional attorney or agent is generally required.

 Why not take this route?

  • It is slow -- Because the life of a patent is calculated from the date of the first filing, the time that one ‘buys’ by selecting the PCT process translates directly into a reduced enforceable life span.
  • Higher overall cost  -- especially if only a few countries are involved.
  • It may not be available -- Not all countries are adherents to the PCT treaty. The great majority of countries are not members of a regional patent authority.

David A. Kiewit
Registered Patent Agent
5901 Third St. South
St. Petersburg FL 33705-5305
+1 (727) 656-0669 voice

+1 (760) 841-0989 fax
questions to: dak@patent-faq.com
Copyright 1999 - 2013 by David A. Kiewit
All rights reserved

 

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