Foreign patent filing is complex and expensive. There are about 200 countries in the world with patent systems, and not even the Fortune 500 companies try to get patents in all of them, due to the expense involved. Your U.S. patent will prevent importation of your invention into the U.S. if it is manufactured in a foreign country and a proper complaint is filed with the United States International Trade Commission.
Under the Patent Cooperation Treaty (PCT), a patent can be obtained in all European countries for approximately $88,000 [citation]; a patent in Japan costs about $6,000.00+ (translation fees alone are about $2,000 minimum). A patent in Canada typically costs about $2,500.00; a patent in Australia and South Korea will cost about $4,000.00 (each country).
Paris Convention Versus Patent Cooperation Treaty (PCT)
As a rule of thumb, use the Paris Convention if you want a patent in just two or three foreign countries; this requires the filing of a certified copy of the U.S. application and a translation within one year of the U.S. filing date if said filing date is to be preserved. Since it can take a month to get a certified copy, you can’t wait until the last month of the year if invoking the Paris Convention.
Use the PCT if you are interested in four or more foreign countries; this delays (but does not avoid) the expense of filing translations and eliminates the need for filing a certified copy.
Timing is Critical
Under either treaty, the foreign filing should be accomplished within one year of your U.S. filing date to preserve the U.S. filing date. If you miss the one year deadline, you can still foreign file under either treaty if your U.S. patent has not yet issued, but you will lose the benefit of your U.S. filing date and additional prior art could intervene. If your U.S. patent issues in less than a year, you can still foreign file but in that situation the one year anniversary of the U.S. filing date is the absolute cut-off date for foreign filing. Don’t waste your money filing for foreign patents if you have no means for marketing or distributing the invention in countries foreign to the United States.
Typical PCT Workflow
There are a number of common pitfalls when seeking foreign patent protection. Here are a few:
- Pitfall Number 1: The easiest way to lose all patent rights to an invention is to make a public disclosure of the invention and then wait more than one year before filing a patent application disclosing the invention. Under U.S. law, all patent rights to an invention are irretrievably lost on the first anniversary of the first public disclosure of the invention in the U.S. if no U.S. patent application has been filed by that date. In virtually all other countries, there is an “absolute novelty” requirement. That means that we need to have a pending provisional or non-provisional patent application on file prior to the first public disclosure.
- Pitfall Number 2: Obtaining patents in countries foreign to the U.S. can be quite expensive. For example, a patent in Japan can cost at least $6,000.00 and a patent that covers all 17 countries of Europe can cost $88,000.00 or more, depending upon the extent of prosecution difficulties. However, even if an inventor decides against seeking foreign patent protection, the value of a patent is greatly increased if the right to file foreign patents is preserved. The right to file foreign patents is preserved only by filing a patent application in the U.S. prior to a public disclosure of the invention in the U.S.
- Pitfall Number 3: Even if foreign filing rights are preserved by filing a patent application in the U.S. prior to public disclosure of the invention, a third pitfall remains. If a public disclosure of the invention is made in the U.S. after the U.S. patent application has been filed, all foreign patent rights (except Canada) are irretrievably lost if a foreign patent application is not filed by the one year anniversary of the U.S. filing date.
- Pitfall Number 4: If no public disclosure of the invention is made after the U.S. filing date, all foreign filing rights are irretrievably lost if no foreign patent application is filed prior to the date of issue of the U.S. patent. In other words, the opportunity to foreign file is permanently foreclosed on the date the U.S. patent is published.
- Pitfall Number 5: Note the difference between pitfalls 3 and 4. If the invention is not publicly disclosed after the U.S. filing date, foreign applications may be filed more than one year thereafter, as long as they are filed prior to the issue date of the U.S. patent. A foreign patent application filed within one year of the U.S. filing date (with or without a public disclosure after the U.S. filing date) is entitled to the U.S. filing date. However, a foreign patent application filed more than one year after the U.S. filing date is awarded its actual filing date in that foreign country, not the U.S. filing date. This means that additional prior art (art that arises after the U.S. filing date) can be asserted against the claims of the foreign-filed application.
- Pitfall Number 6: Not asking us to explain these pitfalls in more detail. Every inventor should discuss the specific facts of an invention with a patent attorney rather than rely upon this summary of pitfalls. It is not always easy to determine what constitutes a “public disclosure,” for example.