International Patent Procurement

January 2016

By: Shaun Vavra

Securing patent protection in countries outside the United States can be an important business decision, and imperative to ensuring the success of a product or service abroad. Below are ten points that businesses and inventors should consider when seeking international patent protection:

The international markets for your invention

A U.S. patent will only afford you the right to exclude others from making, using, offering for sale, or selling your invention in the United States. Accordingly, when protecting your invention you should consider where associated products or services will be offered for sale, made, or used. In addition to the potential market for your products, you should also consider the location of current and potential competitors and manufacturing partners, and whether your patent could be sufficiently enforced in the countries of interest.

The cost of filing in other countries

Attorney’s fees, filing fees, and periodic maintenance fees in jurisdictions around the world can differ from those of the United States. These fees can significantly increase the cost of obtaining international patent protection. Balance the benefits of international patent protection with the costs of filing when making your decision to file abroad.

When to file your application

Patent laws in other jurisdictions often have different timing requirements and grace periods than those of the United States. When making the decision to file a patent application abroad, consider if and when public disclosures or public offerings will be made regarding your invention. Furthermore, some jurisdictions require a translation at the time of filing, which can extend the time necessary to prepare your patent application for filing.

Do you need permission to file in a foreign country

Review the citizenship and country of residence of the inventors and the country in which the invention was conceived, before filing your application. Some countries (including the United States) will require a foreign filing license before the application can be filed in another country.

How will you be filing

Generally, there are three routes for filing a patent application abroad: 1) filing a PCT (Patent Cooperation Treaty) application; 2) filing a national application at another patent office; and 3) filing a patent application at a regional patent office (e.g., the European Patent Office). A PCT application may be advantageous for the cost and strategic reasons.

Patent laws and rules

The standards of patentability and examination procedures are not the same around the world. For instance, the laws for patentable subject matter can vary between countries and directly impact whether you may receive patent protection for systems and methods such as software products, business methods, and medical devices and procedures.

Is the Patent Prosecution Highway (“PPH”) is available

The PPH program allows for expedited examination in participating countries if the claims of a patent application have been found allowable by a patent office of at least one participating country. Accordingly, the PPH program may provide a route to reduce prosecution costs as well as stream-line prosecution.

Searching Authorities for PCT Applications

Filing a PCT application will afford you the opportunity to select an International Searching Authority (“ISA”) from among several patent offices, and receive a Written Opinion regarding the patentability of your invention. When selecting a Searching Authority, consider the cost, quality, and speed of the Searching Authority, as well as, the countries in which you plan to file.

After-grant requirements

Some countries impose strict marking or working requirements on patent owners after a patent has been granted. For example, some countries require products covered by the patent to be manufactured within that country within three years of the grant of the patent. Failure to do so may result in compulsive licensing, or even the loss of your patent rights.

Requirements for further filings

In contrast to the United States, which permits the filing of a continuing application at any point before the issuance of a parent application, some countries impose strict requirements on the timing of related application filings. Accordingly, consider your options for continuing applications up front when filing abroad.