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 domestically.

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 patents. Back 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. Back to the top

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. Back to the top

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. Back to the top

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.
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