Patent Protection in Foreign Markets

Many companies that formerly sold their products only in the U.S. are now looking to foreign markets to expand their sales. This brings up the issue of obtaining foreign patents for their inventions. Our firm has extensive experience in obtaining patent protection in various countries for our U.S. clients. We also serve as the foreign patent counsel for some clients outside the U.S.

For a U.S. company interested in obtaining foreign patents, there are several things that need to be considered. First, most foreign countries require absolute novelty of the invention. In order to maintain absolute novelty of an invention, it is necessary to file the U.S. application before disclosing the invention on a non-confidential basis. This differs from U.S. law, where you can obtain a patent as long as you were the first to invent, and the invention was not offered for sale, in public use, or described in a printed publication more than one year before your U.S. filing.

Let’s say, for example, that you were planning to put one of your products in the field for testing in January 1999 where bystanders could see it. This would be a situation in which the invention would be disclosed on a non-confidential basis. That means that you would want to file your U.S. provisional or regular utility application before your product was placed into the field. Then, within a year of filing the U.S. application, you would want to foreign file the application in the countries that would be your most likely markets.

If you wanted to postpone the filing in individual countries, you could make your foreign application a Patent Cooperation Treaty (PCT) application, designating as many countries as you wanted in that application. Filing a PCT application listing all the member countries costs about $4,000 if you use the European Patent Office as the search authority. Using the European Patent Office as the search authority gives you another good search in addition to the search done in the U.S. It is to your advantage to have as much good information as possible before making decisions about foreign filings, and this additional search is very helpful in that respect.

If you want to continue to postpone your decision, you could later file a demand for a preliminary examination under the PCT, which costs approximately $1500. Then, you must file in the individual countries of your choice within thirty months of the original U.S. filing date in order to preserve your rights in the individual countries. For Europe, it is possible to file a single application in the European Patent Office which would eventually result in patents in several European member countries.

Country Selection:

In selecting the countries in which you want to foreign file, you should be thinking about the countries that are your most important markets.

Foreign Prosecution:

The foreign prosecutions of patent applications are very similar to the U.S. prosecution, except that foreign associates, who are familiar with their country’s laws and requirements, are involved. Some foreign countries are simply registration countries, meaning that they do not examine the applications and simply wait for the validity of the patents to be tested in court. The cost of obtaining patents in foreign countries varies, but, as a rule of thumb, you may expect to spend $5,000 to $10,000 per country. There are also maintenance fees required to maintain patents in effect in foreign countries.

There are so many options in foreign filing your patent application that it may not make sense for you to make all your foreign filing decisions at the outset. The important things to remember are to file your U.S. application before disclosing your invention to anyone on a non-confidential basis and to foreign file within a year of filing your U.S. application. There are a few countries of some importance that are not signatories to the Patent Cooperation Treaty or other reciprocal patent agreements, so, if you know the countries that will be your important markets, you may want to check them with your patent attorney to be sure you do not lose rights in your particular countries of interest. Filing patents in foreign countries can quickly become an expensive proposition, so it is well worth taking the time to think through your strategy and consult with your patent attorney as you are making your decisions.