Patent applications are jurisdictional, meaning that they are only good in the country in which the application was filed. Therefore, in order to have patent rights in other countries, a separate patent application must be filed in those countries as well. Given the complexity of foreign patent filings, below will discuss some of the relevant strategies to consider after a U.S. patent application has been filed.
I. Why File a Foreign Patent Application?
As discussed above, a U.S. filed patent application would only have effect in the United States, further there is no all-encompassing international patent. In order to obtain foreign patent rights, one must file directly in each foreign country because the patent laws of each country are different. Alternatively, a single patent filing under the Patent Cooperation Treaty applications (PCT) can be made designating multiple foreign countries. This is discussed in further detail in section II below.
So why file a foreign patent application? One of the primary reasons is to obtain protection in the foreign countries you do business in or plan to do business in. Filing a patent and obtaining a patent registration in a country in which you conduct business may allow you enforce the patent against infringers or can be used for defensive reasons as well. Sometimes a foreign filing may bestow political significance, especially if you are conducting business with governments.
II. What Countries Should I File a Patent In?
Simply stated, a patent application should be filed in any country in which you desire to enforce your patent rights, but there are many other considerations. First one should consider where they are currently or planning to conduct business, such as where they conduct sales, the location of the customers, or other transactions such as manufacturing. Other considerations such as where your competitors are located and whether the patent is to be used for offensive purposes or to obtain revenue from licensing or selling should be considered.
Realistically however, a cost benefit analysis must be conducted as foreign patent fees can dramatically add up, further not all countries or jurisdictions have a sophisticated patent system to realistically enforce the patent. As such the company’s overall patenting goals should be reconciled with the company’s budget, analysis of the patent jurisdiction, determination of competitors or licensing targets in said countries, and also whether there are particular time constraints that may prohibit the patent filing beyond a certain time period. In regards to timing, patent laws are very particular in regards to the timing of filing patents in foreign countries, so if you fail to file within the prescribed times in a foreign country, you may be entirely barred from filing. More about the timing is discussed below.
But as a general rule of thumb, most companies consider the United States and Europe (EPO) and the two critical locations for patent filings. Other countries to file may depend upon the type of invention that is being protected. For medical device filings the EPO, Japan, China, Korea, Canada, Mexico and Australia tend to having filings, whereas “tech” patents are typically filed in the EPO, Korea, Japan, Taiwan, India, China, Canada, Brazil, Russia and Australia.
III. How to File a Foreign Patent Application?
A. Direct Patent Filing in the Foreign Country
If the decision has been made to only file in one or two particular foreign countries then filing directly in those foreign countries makes sense. Further this must be done within twelve (12) months from the earliest filing date of the U.S. application. Often the foreign corresponding application is filed shortly after the initial U.S. filing once the Foreign Filing License is received. The costs for foreign patents are extremely high due to the official government filing fees, possible translation costs, and the fees for the patent attorneys or agents in those countries that must be retained. As such, if the intended filing is done in multiple countries, and you are not sure which countries you want to commit to yet, direct filing will be very expensive and time consuming. In that scenario, filing a Patent Cooperation Treaty application (PCT) may likely be a better alternative.
B. P.C.T. (Patent Cooperation Treaty)
Instead of filing directly in each individual country, the PCT was developed to streamline the foreign filing process. Filing a single PCT application within twelve (12) months of the U.S. application will give you the earlier priority date of the U.S. application for every PCT member countries. For example, if you want patent protection in six different countries, you can file a single PCT application assuming those countries are members to the PCT. The effect will be that each country will gain priority of the earlier filed U.S. patent application date. See the following link for an up-to-date list of the PCT members. You then have a total of 30 months (31 in some countries) from the U.S. filing date to file a National Stage application in each country individually. The main benefit is that you are able to defer time while you decide which countries you wish to pursue patent protection in. This is a huge benefit because if you do not currently have the budget to file in multiple foreign countries, one PCT application can secure your right for 30 months while you decide what countries are actually worth pursuing. A caveat to the PCT is that at least one patent owner or inventor must be a US citizen or resident, and if not the PCT application must be filed elsewhere if anywhere at all.
IV. When to Foreign File?
This is probably the most important issue. Generally, you should foreign file (or PCT application) within twelve (12) months from the date of the earliest priority filing date. So if your first application was an US utility application, then the deadline would be twelve months from that filing date. Assuming you timely file the PCT application, under the Paris Convention, your foreign application or PCT application will gain benefit of the earlier filing date, i.e., your foreign application will have the same filing date as the earlier filing date. So what effect does this have on U.S. provisional applications? The foreign application must be filed within one year of the provisional application, if a provisional application was first filed. In the case of a direct filing, in the U.S. a Foreign Filing License must be issued prior to filing an application in a foreign country. However, a Foreign Filing License is not required if we file through the PCT since the PCT application is filed via the USPTO.
If you have filed the PCT application just prior to the one year anniversary of your utility application (or provisional patent application) filing date, you then have an additional 18 months to file a National Stage application in each particular country you designated in the PCT application.
Although there is more than one way to foreign file, the classical method is as
follows:
- File US utility patent application (nonprovisional);
- File PCT within one year; then
- Follow up the National Stage filings prior to 30 months from the first US utility filing date.