In this article we're going to discuss what's involved with filing for a patent outside of the United States of America. There are a number of factors a company or inventor has to consider before filing for a patent outside of the United States. The first thing a company must know is that most foreign filed applications will be published eighteen months after their priority date.
So if a company files an application outside the United States it will eventually forfeit any trade secret protection for the invention, software or method stated in that application. However, if the company files for a patent only in the United States it can maintain secrecy until the actual patent is issued. The next factor a company needs to consider is in what countries patent protection would be worth the trouble. In other words, you don't want to apply for a patent in a country where they don't have the technology or infrastructure to use your method or invention. For example, in countries where there is no Internet access it would be a waste of time and money to apply for a patent for some form of online sales method.
After you decide that you want to apply for a patent outside the United States, there are a number of filing options available. One option is to file for the patent directly at the patent office in the country which you want to get the patent for. A company should only use this option if it knows exactly what country or countries it wants the patent for and knows for certain that it isn't going to file for a patent in any additional countries. The company also has to be prepared to spend the filing costs necessary, which can be quite expensive for overseas patents. The lower end countries are around $4,000 for filing for a patent.
In the higher end countries, like Japan because it is considered a world market leader, the costs can be as much as $12,000 for one patent. Another option for filing for a foreign patent is to file for one with the European Patent Office (EPO). Filing directly with the EPO allows the company to file one application and to designate as many as 18 countries for the patent to be filed with. The EPO conducts an investigation of the application and then if it finds that everything is in order, grants the patent. A third option is to file for a patent under the Patent Cooperation Treaty (PCT). The advantages of doing this are that in doing so you get to delay your decision on which countries to file your patent with.
This also defers any payment of fees. A country should do this only if it is unsure of what countries it wants to file with and needs time to do some studies on the benefits of filing with each country it is considering. This method preserves patent rights without any commitment. A company has a number of options for filing for a patent outside the United States.
It should therefore conduct proper research into potential markets before choosing which option to take. .
By: Michael Russell
