International Patent Strategies

DEREK FAHEY, ESQ.

Many inventors and businesses ask whether they should seek international patent protection. The answer depends on business goals, overall strategy, and budget. Foreign filing decisions should be tied to where a product will be sold and where the patent owner is realistically prepared to enforce its rights.

What Does a U.S. Patent Protect?

A United States patent allows its owner to exclude others from making, using, or selling the claimed invention in the United States. It does not provide protection outside the United States. Protection in another country generally requires obtaining patent rights in that country.

Choosing Countries For Patent Protection

Businesses should consider the countries in which they intend to sell the invention and the countries in which they would be willing and able to enforce patent rights. Large companies may seek broad international coverage, while smaller businesses often concentrate on one or two commercially important markets.

Because market validation may take time, businesses frequently need a strategy that preserves options while they test demand and evaluate where sales are likely to justify the cost of foreign filings.

Using a PCT Patent Application

A Patent Cooperation Treaty application provides a coordinated procedure for seeking patent protection in many countries. It does not itself become a worldwide patent, but it can postpone the decision about which individual countries to enter.

After filing a PCT application, the applicant eventually enters the national phase in selected countries, generally within 30 or 31 months from the earliest priority date. This additional time can help a business evaluate markets, funding, manufacturing, and enforcement priorities before paying country-specific filing costs.

When a PCT Application May Not Be The Best Choice

When an applicant is certain that protection will be pursued in only one or two foreign countries, direct national filings may be more economical. A PCT filing also may be inappropriate when public disclosure or an attempted sale occurred before the first patent filing, because many foreign jurisdictions do not provide the same disclosure grace period available under U.S. law.

International filing strategy should therefore be evaluated early, before public disclosure, and with careful attention to budget, target markets, and the likelihood of enforcement.