Making decisions about non-US patent filings
Note: this page is written for a reader who is a US entity and who has already filed a patent application in the US, and who is thinking about filing patent applications outside of the US. Note further that the decisions faced by such an entity will rely upon particular facts, meaning that this page cannot possibly address one's actual detailed situation. Thus, anyone who faces decisions such as those described here is directed to obtain advice of competent patent counsel who can take into account one's detailed situation. This page should not be taken as a substitute for legal advice from competent patent counsel who are in possession of all of one's detailed facts. Reading this page does not create an attorney-client relationship with Oppedahl Patent Law Firm LLP.
Paris Convention twelve-month period. On the day that an US entity files an US patent application other than an US design application, this starts a twelve-month period during which it is possible to file corresponding patents applications outside of the US in countries that belong to the Paris Convention, each of which will be treated in its own country as if it had been filed on the date that the US application was filed. This often leads to a scramble, about eleven and a half months after the filing of the US application, to try to decide whether or not to spend money on patent filings outside of the US. (At http://www.wipo.int/treaties/en/documents/pdf/paris.pdf you can see a list of the 173 countries that belong to the Paris Convention.)
A first thing to appreciate is that missing the twelve-month due date does not necessarily mean the applicant has lost any chance to obtain patent protection outside of the US. It merely means that an application filed outside of the US will only enjoy its own filing date and will not enjoy the filing date of the US application. Because most countries outside of the US refuse patent protection if the filing date is after a date of public divulgation of the invention, it is of course greatly to one's advantage to get the earliest filing date, namely to file within the twelve-month period.
A second thing to appreciate is that not all the countries of the world belong to the Paris Convention. For example, Taiwan does not belong.So if one wishes to apply for patent protection in any non-Paris-Convention country it is important to do it right away and not to rely upon the Paris twelve-month period. The remainder of this discussion assumes that one is not interested in patent protection in non-Paris countries.
Filings outside of the US. The cost to file a patent application outside of the US will, depending on the country, be a function of the number of claims included in the patent application. It will also be a function of the general level of patent fees in the country of interest, as well as the level of professional fees charged by patent counsel in that country.
Assuming a modest number of pages, then on average the cost per country may be estimated at varying from around $1500 to around $1,1000. Filing in all Paris countries would cost well over $200,000. It is a rare US entity for whom a filing in all available countries would be justified.
Among some countries that are often selected by US applicants, here are some guesses as to cost for the patent filing in that country:
Filing in individual countries of Europe can be estimated in cost at $3000-4000 per country.
It should be emphasized that in any one country the cost to file a patent application in that country is not the total cost to obtain a patent in that country. Some examples of reasons why there may be further expense include:
One-stop shopping: Europe. There is a way to file a single patent application directed to coverage in all of Europe. The application, called a "European Patent Office" or "EP" application, is filed with the European Patent Office (EPO). You can see a listing of the countries that belong to the European Patent Office. As of May 2010 the member countries included:
There are also "extension states" -- countries which recognise European patents:
There is also a country that is invited to accede to the European Patent Office:
It will be noted that the European Patent Office extends beyond European Union. As one example, Switzerland belongs to the EPO yet does not belong to EU.
The cost to file such an application may be estimated at around $11,000, including government fees, fees to a European patent firm, and fees to one's US patent counsel.
There are several good reasons why one might choose to use an European patent rather than using a number of filings in particular countries in Europe. These reasons include the following:
It is very desirable to file one's European patent application within the twelve-month Paris period if possible. This will lead to the European patent application enjoying the benefit of the filing date of the prior US application.
There are many other factors that may affect one's choice of an European patent application on the one hand or a number of individual applications in European countries on the other hand. One should consult competent patent counsel to evaluate all of those factors.
Other regional patent offices. In addition to the European Patent Office there are three other regional patent offices, each of which offers certain advantages as compared with individual country filings. These are:
One-stop shopping: the world. The US belongs to a treaty called the Patent Cooperation Treaty. Under this treaty, a US national or domiciliary may file a PCT patent application ("international patent application"). Filing such an application offers many potential benefits:
Why would one not use the PCT, given its many advantages? One factor is that it costs money (typically between $2300 and $3300 in government fees and US counsel professional fees) to file a PCT application. If an applicant has already figured out, within the twelve-month Paris period, exactly which countries are desired, the applicant could file directly in those countries prior to the end of the twelve-month period and skip filing a PCT, thus saving the cost of the PCT filing.
Another factor is that there are some countries in which one might wish to file for patent coverage, that do not belong to the Treaty. You can see a list of member countries.
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Choosing an International Searching Authority. For an US applicant filing a PCT, there are (at least) four choices of International Searching Authority available. It is the ISA that establishes the International Search Report and Written Opinion mentioned above. The three choices are:
Cost of various ISAs. As of April 2010, the Korean search cost $1092, the European search cost $2485, the Australian search cost $1397, and the US search cost $2080.
Some patent applications, especially those with large numbers of independent claims, risk receiving an Invitation to Pay Additional Fees. This is a paper by which the ISA indicates that it feels there are two or more inventions in the claims. The only way to get the additional inventions examined is to pay additional search fees. (One can choose not to pay all the fees, but then some inventions would go unsearched.) For an application that is said to contain eleven inventions, the additional fees to pay would be $10920 (if KR had been selected as the ISA) or $20,800 (if US had been selected as the ISA) or $24,850 (if EP had been selected as the ISA).
Timeliness of search. In the experience of Oppedahl Patent Law Firm LLC, in recent years the USPTO has had a very poor track record of getting its PCT searches done timely. Quite often USPTO is months late and sometimes USPTO has failed to complete the search even after the 30-month PCT period has passed.
EPO is also late sometimes, although not as often as USPTO.
The World Intellectual Property Organization has published statistics regarding timeliness of International Searching Authorities which bear out the experience of Oppedahl Patent Law Firm LLC. As may be seen, KIPO generally gets its searches done on time.
Language of search. The searchers in EPO typically read three or more languages. This can lead to a search report from EPO that finds references in more languages than would be found by KIPO or USPTO. The searchers in KIPO typically read Korean and English, often leading to a search report from KIPO that finds more references than would be found by USPTO.
Facilitating examination after entry into the national stage. If one is particularly interested in getting patent protection in a particular patent office after entry into the national or regional stage, it may be advantageous to choose that office as the ISA. See our article about getting US patents faster using PCT.
It will be seen that if one wishes to have the most timely search, Korea may be the way to go. If one wishes to have the most thorough search, Europe may be the way to go. If one anticipates receiving an Invitation to Pay Additional Fees, Korea may be the best choice.
Cost to file PCT. The cost to file a PCT patent application is a function of the selected International Searching Authority and of the number of pages in the patent application.
It is very desirable to file one's PCT patent application within the twelve-month Paris period if possible. This will lead to the PCT patent application enjoying the benefit of the filing date of the prior US application.
There are many other factors that may affect one's choice of a PCT patent application on the one hand or a number of individual applications in various countries on the other hand. One should consult competent patent counsel to evaluate all of those factors.
Filing a PCT patent application pro se. It is possible for an entity based in the US to file a PCT patent application pro se, that is, without hiring US patent counsel. The United States Patent and Trademark Office has information about the PCT filing process. The World Intellectual Property Organization has many helpful resources about the PCT filing process.
There are advantages and disadvantages to filing a PCT patent application pro se. The clear advantage is that one may be able to save the cost of hiring US patent counsel. Disadvantages include the risk of substantive rights in one or more foreign countries if one files the application incorrectly or makes unwise choices during the filing process.
Choosing how to file in Europe. From the above discussion, it will be appreciated that there are four distinct approaches which one might follow for filings in Europe. These are:
A potential advantage to B or D is that one might not need to hire US patent counsel if one chooses to file pro se.
Regardless of the particular filing approach chosen, it is very desirable to file one's PCT application, one's European patent application, or one's applications in individual countries of Europe within the twelve-month Paris period if possible. This will lead to the application enjoying the benefit of the filing date of the prior US application.
Choosing countries in which to file. Clearly one factor to consider is where one presently has customers. There is much to be said for getting patent protection in each country where one has a significant number of customers.
Another factor to consider is where one might some day have customers. If a particular country is a natural expansion market from the US, then it may make sense to file in that country merely to protect one's invention at a future time.
Yet another factor to consider is where a competitor might manufacture infringing goods.
Countries differ from one to the next in the extent to which they have court systems that work well and take patents seriously. It may not be money well spent to obtain a patent in a country that does not have much of a court system. Experienced patent counsel may be able to assist in evaluating this factor.
Most popular foreign-filing destinations. In the experience of Oppedahl Patent Law Firm LLC, some of the most popular foreign-filing destinations for US applicants include Canada, the European Patent Office, Japan, Australia, Mexico, and China.