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File A Foreign Patent To Gain International IP Rights

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Do you have an invention that you feel will have value in markets outside of the United States? As you bring a new product or process to market it is important that you consider all of the jurisdictions where the invention could be commercially viable. It may be wise for you to seek a foreign patent.

What are foreign patents?

Just as a US patent provides you with intellectual property rights establishing a monopoly on your invention if it is either manufactured or sold in the United States, a foreign patent can secure your monopoly within the country or jurisdictional region where the patent is issued. For example the PCT (Patent Cooperation Treaty) is a patent application that falls under a multi jurisdictional treaty that includes 148 member countries throughout the world. However, the PCT is similar to a provisional patent application in the US in that it is simply a placeholder that allows you to establish a first filing date and gives you a specific period of time (typically 12 months) to file a complete patent application. Of course, you can also skip the PCT and go directly after a specific jurisdiction such as Europe, Japan, China, Brazil, Canada, Mexico or other specific countries depending on the target market for your product.

The Process For Foreign Patent Filing

Wherever you decide to pursue a patent, you will find international patent filing processes to be very similar to the United States. You will need a patent agent or a patent attorney who is licensed in that jurisdiction to interact with the patent office. In this way the process becomes a bit more involved and layered where you have an inventor with US legal representation who is interfacing with the foreign firm and the foreign patent office and then communications come back through the US firm to the inventor.

If you are filing a PCT the process is partially streamlined in that you are filing one application in English, then the PCT is going to do a preliminary search and issue an opinion on patentability. This can significantly speed up the process with individual foreign jurisdictions and potentially save you some money where you will not have to do as much research where you want to file an application. However, a PCT is never going to result in an actual patent being issued. You will have to take additional action in specific jurisdictions based on the PCT.

When Is The Right Time To Pursue A Foreign Patent?

As soon as you know that you want to pursue patent rights for an invention you should take action. The primary reason that this is so important is because most jurisdictions use a “first to file” patent system. This means that whoever files a patent application for an invention first has the priority rights regardless of who actually invented it. Knowing this, many inventors choose to simply remain silent about their invention and work on it in solitude until they feel that it is ready. However, this is extremely dangerous for three reasons. First, the vast majority of time it requires the coordinated efforts of a team to bring a new product to market and therefore working in solitude lowers the chances the invention will get to market. Second, even if an inventor is capable of developing the invention on their own, working in solitude will almost always take longer than working with a team and therefore there is an opportunity cost in lost time to market. Third and most importantly, ideas tend to occur to multiple people at the same time. Through the centuries there are countless examples of unrelated individuals coming up with the same ideas at nearly the exact same time with no direct contact or influence. For these three reasons Genius Patent would like to strongly encourage you to pursue intellectual property protection as early as is feasible in the life of your invention.

Note: It is important to keep in mind that as soon as a provisional or PCT patent is filed, the clock starts ticking on your ability to file a full patent application. Therefore, you must be ready to pursue at least the full application within the allowed time period based on what type of application you filed and where you filed it. If you file a PCT application then you are allowed up to 30 months in order to file patent applications within the actual individual jurisdiction where you are seeking the patent, including the United States. Therefore, as soon as you know that you would like to seek patent protection, it is a good idea to begin the process of filing foreign patents.

What Are The Foreign Patent Filing Costs?

At Genius Patent our top two priorities are to deliver outstanding legal services in every stage of securing your intellectual property and to do so at the most affordable prices possible.

Service Genius Patent Fee Small Entity Filing Fee Micro Entity Filing Fee
Wordwide Patent Search $1,000 $0 $0
PCT Application (with US app.) $1,500 $3,500 $2,500
Foreign Application (with US app.)* $1,500 $5,000 $5,000

* The Small and Micro Entity filing fee columns associated with the foreign application indicate approximate fees for foreign office/associate/translation. Some jurisdictions are significantly less expensive than others, and we are here to discuss those with you based on your needs.

Note: The above pricing reflects an existing US patent. If a US patent has not yet been filed, then the legal fees for starting a patent filing from scratch would be similar to those associated with a US patent.

What Is The Role Of The USPTO In A Filing A Foreign Patent Application?

One of the benefits for us is that we can file a foreign patent with the USPTO and monitor the application through the United States Patent Office. This means that all of the communications will be in English, we will be able to use all of the systems that we would normally use. However, once you go into a foreign jurisdiction, then there is really not going to be a lot of involvement with the USPTO. You may need to make the USPTO aware of references that are cited in either direction (if you have a prosecution going in either place), but they wouldn’t really be involved unless they did the search for the PCT, then you would have documents from them, but other than that the USPTO really wouldn’t be involved with the foreign patent office.

What Is The Timeline For Working With Foreign Patent Offices?

This can vary a lot depending on which foreign patent office you are working with. However, typically after you have filed within that foreign jurisdiction you would be waiting for about 1-2 years to get an office action back. Once that takes place it will be fairly similar to the US process where it might take you another 6 months to a year to come to some final resolution.

What Is The Timeline Involved With A PCT Application?

With a PCT, if that is your first application then you would have 30 months after filing the PCT to pursue specific jurisdictions. However, if you have previously filed a provisional patent within the US and then filed the PCT within 12 months of filing the original provisional application, then you would only have 30 months from the original provisional patent application date.

What Is A National Stage Entry?

A National Stage Entry is when you enter a specific jurisdiction based on a PCT application. So if your first filing is a PCT for instance, and you then pursue a non-provisional patent application in the US. You will have 30 months from the PCT filing to pursue that non-provisional US patent application and it will require some additional documentation, including the patent search and opinion for example, that ties it to the PCT. This process of going for a full non-provisional patent application that references a previously filed PCT is called a National Stage Entry.

In What Countries Does Genius Patent Have Strong Parters?

Genius Patent is able to file PCT applications that will secure your initial placeholder in 148 countries. We have outstanding partnerships with legal firms throughout Asia including Japan, China, India and a lot of the Asian filings we can link together and get a discount through our partners. Then other jurisdictions include the entire European Union, South America, Brazil, Canada and Mexico.

What Are The Potential Jurisdictions Where I Should Patent My Product?

This is a common question and one that can only be answered by understanding the product and the target market for that product. For instance, if you know that a particular product does not currently have AND is not likely to develop a viable market for a particular product, then it would not make sense to pursue a patent in that jurisdiction. However, simply because you do not intend to market a product in a specific territory does not mean that the patent wouldn’t have value there. If you feel that the product would be valuable in a given market, and you believe that other companies may want to pursue selling your patented product in those markets then a patent could make sense for use in licensing. Also, just because a strong market does not currently exist for a particular product, does not mean that the market will not be strong for that product in the future. Therefore, if you believe that your invention will be valuable in a certain market in the near future, and you believe that you could benefit by holding that patent, then a cost/benefit analysis will reveal whether it is worth it or not to pursue a foreign patent in that jurisdiction.

Will I Have To Translate My Patent In Order To File In A Foreign Jurisdiction?

This deepends on the patent office. For instance in Europe you can file in English, but for non-english speaking countries such as China or Japan you will have to translate the patent application into the language of the home country. So, that translation process simply adds a layer to the cost and involvement to the application process. It is important to also make sure that any translator who is used is proficient in the subject matter as well as the language to language translation to ensure that the application is accurately representative of your invention. At Genius Patent we have services to deliver any necessary translations.

What Will The Process Be Like When Working With A Foreign Associate?

From a client perspective, communications will not be affected by working with a foreign associate because all client communications will come through Genius Patent. We are your legal team. It’s our job to take care of everything related to securing your patents so that you can put your energy into growing a successful business.