FILING PATENT APPLICATIONS IN FOREIGN COUNTRIES

Filing your patent application in a foreign country is a business decision on the part of most inventors which requires careful consideration.  This process can be very expensive because each foreign country has its own set of rules and regulations, as well as fees for filing patents.

One must think about the potential customer and the company's value of business in a foreign country.  If your plan is to license your invention to a large, multinational firm, then you might seriously impair the value of your invention if you do not take the necessary steps to secure the right to file for foreign patent protection.  If a large corporation can only protect the invention in the US, then its worldwide sales will suffer due to competition from other companies outside of the US.  Further, if your company plans to sell internationally, then you must be able to protect your invention in foreign countries.  Therefore, it is best to secure the right to file foreign patents, even if you later choose not to do so.  To ignore the world market in a world economy can be risky to the value of your invention.

PCT Patent Filings.  Under the Patent Cooperation Treaty ("PCT"), once you have filed your patent application in the US, you can "reserve" your rights to file in foreign countries by filing a PCT application with the U.S. Patent & Trademark Office ("USPTO").  PCT applications are administered by the World Intellectual Property Organization (WIPO).  Currently, there are 142 contracting states that are members of the PCT [click here to find a current listing of member states].  This method allows the inventor to pick the countries in which he or she feels the invention requires protection.  More importantly, if an inventor plans to license the invention to a multinational corporation, then the countries where such large corporations operate and sell products would be prime candidates.  However, you only have one year from the date of your US filing to file a PCT request, otherwise you may lose valuable intellectual property rights in foreign countries.

Foreign National Filings.  An inventor can also file directly into each foreign country where the inventor believes there is a value to do such for the inventor's company or customers.  There are numerous countries that are not members of the PCT [click here to find a list of non-member countries] and therefore it would be required to file directly within these countries.  This foreign filing should be accomplished within one year of your first US filing date in order to preserve the US filing date.  However, if you miss the one year deadline, you can still foreign file if your US patent has not yet issued, but you will lose the benefit of your US filing date and additional prior art could intervene and prevent protection of your invention in the foreign countries.  If your US patent issues in less than a year (highly unlikely due to the current back log of the USPTO), you can still foreign file, but in that situation the one year anniversary of the US filing date is the absolute cut-off date for foreign filing.  The inventor may expend a considerable amount of funds in this foreign quest.  Therefore, the inventor should choose each country using a business analysis of the cost versus the gain in each country.

W: WIPO (World Intellectual Property Organization) is one of the specialized agencies of the United Nations, which was created in 1967 for the encouragement of creativity and promotion of the protection of intellectual property throughout the world.
 

X: X-Patent is a term referring to Patents issued by the USPTO (prior to the Great Fire of 1836) between July 1790, the date of the first U.S. issued patent, and July 1836.  Most of 2,845 restored patents were eventually given a number beginning with "X".

 ~and~
 
 

Now that we are though the soup

Of alphabet's IP,

Except for two, right at the end -

And go from Y to Z:

Y's the reason patents file -

To make some dough's a must!

And who's the best firm you can use?

Z answer is, it's us!