Filing Your Patent
Application in a Foreign Country
A Business Decision Necessesitating Strategy
Foreign Patent Filing: Filing
your patent application with the U.S. Patent and Trademark office
is the first step in your quest to secure protection of your idea.
If a patent is granted by the U.S. Patent and Trademark Office you
secure exclusive rights to your invention in this country. However,
unless you take affirmative steps to secure Patent protection outside
the USA, you will only be afforded protection for your invention
Foreign Filing of your Patent application is a business decision
on the part of most Inventors which requires careful consideration.
It can be a very expensive process, since each foreign country has
its own set of rules and regulations, as well as fees for filing
to the top
Does your customer or your company value
foreign business? If you plan to license your invention to a
large, multinational firm, you may seriously impair the value of
your invention if you do not take steps to at least secure the right
to file for foreign patent protection. If a large corporation can
only protect an idea in the USA, their sales world wide will suffer
due to competition from other firms outside the USA. Furthermore,
if your company plans to sell internationally, you must be able
to protect your invention in foreign countries. It is thus prudent
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 seriously hazardous to the value of your invention.
PCT Patent Filings: Under the Patent Cooperation
Treaty (PCT), once you have filed your patent application in the
USA, you can "reserve" your rights to file in foreign
countries by filing a PCT Application with the U.S. Patent &
Trademark Office. Using this method, the inventor picks the countries
in which he or she feels the invention needs protection. More importantly,
if an inventor plans to license the invention to a large multinational
corporation, countries where such large corporations operate and
sell products would be prime candidates. However, you only have
one year from the date of your USA filing to file a PCT request.
Using the PCT filing, the inventor pays a fee to the US Patent
& Trademark Office PCT Section for each country in which a reservation
is desired. Once about 8 countries have been paid for, the inventor
can essentially have the entire world reserved at the same price.
Including legal fees, this costs about $5000. A fairly large sum,
but considerably less expensive than actually filing in even one
of the many foreign countries.
Such a filing, as noted above, imparts value to any large corporation
who might be interested in licensing your invention.
Foreign National Filings: An inventor
can also, if desired, file individually in each foreign country
where the inventor feels there is value to do such for the inventor's
company or customers. In this manner, the PCT process can just be
skipped; however, the inventor will expend a considerable amount
of legal bills in this foreign quest and should choose each country
using a business analysis of the cost versus gain in each country.
We can handle your foreign needs.
Whether you need to file in only one country immediately for a current
patent, or, wish to reserve countries in a PCT filing, the Law Office
of Donn Harms can handle your needs. We have associate patent counsel
in almost every country in the world, including Russia and China.
We can also file your PCT filing on a weeks notice if you are up
against your one year deadline to file a PCT filing. However, we
prefer a month.
Please feel free to contact
Donn K. Harms personally to further discuss your needs in the
foreign arena, either by a PCT Filing, or directly in any foreign
country in the world.
Back to the top