Trying to Take Over the World: When is it Appropriate to File a Foreign Patent Application?

7

July

2017

So you’ve filed a patent application in the United States and created a product that you dream will be a best seller, but your dream doesn’t stop there. You want to go bigger and bolder. You don’t just want to be the best in your local area, but the best in the United States. Still not big enough? How about being the best worldwide! How do you do that, you ask? You file a foreign patent application! Okay, let’s take a step back. Maybe world domination isn’t on your radar but protecting your invention on a larger scale may be important. Determining the appropriate markets to approach and protect your product from is a vital step in the strategic process of getting you closer to your goal. Here is some basic information worth considering when deciding when a foreign patent application may be appropriate.

An invention is only protected in the countries in which the inventor files for patent protection. If a product is being sold only in the United States, a U.S. patent would be sufficient. However, if you dream a little bigger and plan for your product to be sold internationally or even in a single country outside of the United States, an international patent could be very useful.

If a seller of goods is selling your product in a foreign jurisdiction it could be very difficult, if not impossible, to prevent the sales of these unauthorized sellers without a patent in that specific jurisdiction.

Discussing the situation with your patent attorney is always your best option.

“Aside from the innovation itself, a patent attorney is arguably the single greatest resource in building your patent portfolio.” – Edison Nation

(we swear this is from an outside source and not just our humble opinion!)

 

In 2012, the United States Patent and Trademark Office (“USPTO”) issued a report to Congress concerning international patent protections for small businesses. The report’s findings suggested that many small businesses could benefit from extending their patent protection outside the U.S. but that few were aware of the need to do so.  Small businesses were also unable to afford the high and recurring financial cost of filing international patent applications.

For many small companies, patent protection provides the best means to obtain an advantage over established industry leaders.  Patent protection prevents established industry leaders from copying new innovations and helps small businesses and start-ups in attracting investor capital needed to grow, build market share, and create jobs.

However, obtaining a patent outside the U.S. is very expensive.  While you can file an international patent application under the Patent Cooperation Treaty (“PCT”), there is no such thing as an international patent.  You must obtain a patent in every country where you want patent protection.

International filing decisions are just as much business decisions as they are patent protection ones.  A shot gun approach to patent protection may not be feasible or even appropriate, for many companies, particularly those who are on a tight budget or plan on launching in a very limited geographical area.  If you are not sure where you want to file, the international application may be a great way to delay the decision, as it gives businesses an opportunity to properly evaluate their opportunities before committing to certain countries..

The PCT application is likely advantageous when there is a clear global need or where it is likely market exists for the product around the world.  However, it is important to note that a U.S. patent prevents imports into the U.S. If the U.S. is the primary market you intend to operate in, a foreign patent may be unnecessary.

In short, it may be appropriate to file a foreign patent application if you are planning on selling your product in a foreign country and want to protect against foreign markets selling your product in that country.  If your primary market is the U.S., your U.S. patent will protect you from outsiders importing your product into the U.S.

The key to a successful patent protection strategy is making informed decisions.  If you consider all choices at each decision point, you are much more likely to have a strong intellectual property portfolio in comparison to a portfolio that arises out of reactions and last minute scrambles based on external deadlines or forces.

Your best resources in making these choices are your business advisors, business attorneys, and, of course, your patent attorney.  Your entire team could provide valuable insight into the pros and cons of filing overseas and help you plan accordingly.

So if you are ready for world domination, or at least thinking about expanding your product outreach, it may be time to consider a foreign patent application.

Trying to Take Over the World: When is it Appropriate to File a Foreign Patent Application?

time to read: 5 min