This memo outlines various options and costs for obtaining patent protection outside the U.S. Please note that cost estimates are approximate and are dependent upon many factors, including the complexity and length of the application, the number of claims, the duration and extent of the prosecution, current exchange rates, and fees charged by foreign authorities, translators and counsel.
Determine Where Patent Protection is Desired
Nearly every country has its own patent system, and patents issued by any one country are typically enforceable only within the borders of that country. A patent on a widget issued by the United States Patent and Trademark Office (USPTO), for example, cannot be used to prevent a German company from selling the German‐made widget in Germany or in any country other than the U.S.
In deciding whether to file international applications, pertinent factors include where others might be expected to manufacture competing goods, where substantial sales of the patented product are expected, and where enforcement of patent rights is likely to be cost effective.
Although every patent applicant has different interests, the countries in which our clients most often file include Australia, Canada, China, Europe (which is treated as a single country for examination purposes), Japan and Korea.
An additional consideration is the potential loss of secrecy surrounding the application that results from international filing. An application originally filed only in the U.S. is not required to be published unless and until it matures into a granted patent. If, however, the subject matter of that application is filed outside of the U.S., both the U.S. and the foreign application(s) will be published while they remain pending, and the complete file histories of the applications will be available to the public. In addition to signaling the public as to the company’s patent strategy, the publication will also result in the loss of any trade secret protection for the published subject matter.
International Filing Options
Under the widely adopted Paris Convention, a patent application filed in another country can benefit from the earlier U.S. application’s filing date. That is, the foreign application will be treated for purposes of searching the prior art as though it had been filed in the foreign country on the same day as was the U.S. application. The treaty requires that any foreign applications be filed within one year of the original filing.
File Directly in National Patent Offices
One option is to file a patent application directly in the patent office of a selected country. Examination by that country’s patent office can be requested immediately, which may result in a quickly issued patent. This approach is typically most helpful when only a small number of countries are of interest, because the filing fees are due immediately and may be large. In addition, because each patent office will examine each application independently, the claims that issue in each of the different countries may differ substantially from each other.
The cost of filing a patent application in a national patent office ranges from about $3,000 to $11,000 per country, including attorney fees and translation costs. Japan is typically among the more expensive countries in which to file an application, and Australia and Canada are typically among the least expensive. These costs are for filing a patent application, and not for obtaining a patent, or maintaining the patent application and eventual issued patent. These additional costs occur over a period of years following filing as the application is prosecuted in each country. In some countries, maintenance fees must be paid on a yearly or bi‐yearly basis while the application is pending, and these fees can be quite expensive, ranging from hundreds to even thousands of dollars over the life of an application and issued patent.
File a Patent Cooperation Treaty Application
An alternative to the direct national (or regional) filings described above is a filing under the Patent Cooperation Treaty (PCT). The PCT is an enhancement to the Paris Convention, and the same filing deadline applies—a PCT application must be filed within one year of an original filing to claim the benefit of the earlier priority date. As with the Paris Convention, almost every major country is a signatory to the PCT. Of the few countries that are not signatories, the most notable is Taiwan.
A PCT application is examined by a search authority chosen by the applicant (typically the USPTO, the European Patent Office (EPO), Korean Intellectual Property Office (KIPO), or Chinese Patent Office (SIPO)). Following the search, the applicant has the option of providing a written response and amending the claims. At the conclusion of this process, the applicant designates individual countries or regional offices in which to proceed with prosecution. The designated offices receive and review the proceedings from the international phase, and often use the international search as a basis for their own examination. Importantly, the application still has to be prosecuted separately in each national office, and the individual patent offices are not bound by the findings from the international phase.
A PCT application provides a number of advantages, including the deferral of national filing fees and translation costs and a more consistent examination across different patent offices. The timeline of the PCT process allows an applicant to wait until 30 months (or longer, in some countries) before having to decide on specific countries in which to file. In addition, the prior art search and examination report prepared by the PCT search and examination authorities allow the applicant to make a more informed choice about whether and where to proceed. And although the national patent offices are not required to adhere to findings made during the international phase, in practice examiners tend to rely extensively on those findings, which affords the applicant the opportunity to make similar amendments and arguments in multiple countries, reducing the overall cost.
Including legal fees, the cost of filing a PCT application usually ranges from $3,000‐$5,000, depending on which searching authority is chosen and the number of pages in the application. If the applicant chooses to file a response and amendments following the international search report, additional costs typically ranging from $1,500‐$4,000 will be incurred.
Because not all countries are signatories to the PCT, please check this list prior to filing and let us know if there are countries of interest to you (including Taiwan) that are not included in the PCT. Protection can be obtained in those countries by filing direct national applications as described earlier.
Filing in Europe
Some countries have agreed amongst themselves to have a single patent authority examine applications on behalf of all of the member countries. Most notable of these Regional Patent Offices is the European Patent Office (EPO). A single EPO application (filed either directly or via the Patent Cooperation Treaty), is examined by a central office on behalf of up to 38 European countries. Once the EPO finds a patent application to be allowable, the applicant can bring the patent into force by paying a grant fee (and usually a translation fee) in any or all of the 38 countries.
The EPO examines applications on behalf of the following countries: Albania, Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Greece, Germany, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Macedonia, Malta, Monaco, Netherlands, Norway, Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey, and United Kingdom.
If you are interested in obtaining protection in more than a single European country, it typically makes sense to file in the EPO rather than in the countries individually.
For additional information and specific legal advice, please contact us.