Worldwide patent protection can be advantageous for established corporations with extensive distribution and marketing networks. However, for startups and individual inventors, global patent protection may have limited benefits. This article explores the pros and cons of securing worldwide patent protection and provides an overview of the necessary steps.
The Benefits and Drawbacks of Global Patent Protection
For startups and solo inventors lacking established relationships, it can be challenging to profitably execute a business plan in a foreign country. Without established marketing and distribution channels abroad, making money can be difficult. Therefore, unless there are compelling reasons, I do not recommend seeking foreign patent protection for startups and solo inventors.
However, for large companies with established marketing channels or specific business plans, it makes sense to protect their inventions overseas. One reason startups may want to reserve the right to seek worldwide patent protection is for potential future licensees and buyers who already have established marketing and distribution channels in foreign countries. By reserving the right to file in other countries, startups incur no initial costs and only need to extend the due date for seeking patent protection at a later stage.
Countries Preferred by Startups for Patent Protection
Europe is a region where patent protection is frequently sought, despite the high costs associated with it. Alternatively, for those who want to patent their inventions in countries besides the United States, China offers an inexpensive utility model patent. By repackaging and submitting the US patent application to the State Intellectual Property Office of the People’s Republic of China, inventors can obtain a patent almost automatically. However, it’s important to note that enforcement in China’s court system might invalidate the patent.
The Right Time for Seeking Foreign Patent Protection
Foreign patent protection requires significant financial resources and is generally more suitable for larger companies with established business relationships and distribution networks. Multinational companies can project the countries in which foreign patent protection should be sought accurately. However, for startups and solo inventors, it is often challenging to determine the best countries for seeking patent protection due to limited resources and market knowledge.
In most cases, I do not recommend startups and solo inventors seek foreign patent protection due to the significant costs involved. However, if there is a compelling reason, such as a potential future licensee or buyer who considers foreign patent rights essential to their business, startups should consider incurring the expense. By preserving the right to seek patents in foreign countries, startups can increase their patent portfolio’s desirability for future investors and licensees.
Filing a Patent Application to Preserve Foreign Filing Rights
To preserve the right to seek worldwide patent protection, filing a patent application before engaging in any marketing activities is crucial. Most foreign countries require “absolute novelty,” meaning that if a patent application is filed after marketing activities, the invention is no longer considered novel. In the United States, however, inventors have the luxury of a “relative novelty” system, which allows them to commercialize their inventions for up to one year before filing a patent application.
Despite the relative novelty provision in the United States, I recommend filing a patent application before beginning any marketing activities to avoid complications. The First Inventor to File rule states that worldwide patent protection is generally waived if marketing efforts begin before filing a patent application. Therefore, to secure worldwide patent protection, inventors must file a patent application before starting any marketing activities.
Using a PCT Application to Extend Patent Protection
The Patent Cooperation Treaty (PCT) allows applications filed in one country to be extended to other countries within 30 months of the original filing date. By filing a PCT application, inventors can delay filing country-specific patent applications and maintain the priority date of the original application. This flexibility is particularly beneficial for startups, smaller companies, and solo inventors who want to protect their inventions in multiple foreign countries without incurring immediate costs.
While filing a patent application directly in each foreign country is an option, it is often cost-prohibitive for most inventors. The PCT application allows inventors an additional 18 months to decide in which countries or regions to seek patent protection. This extended timeline provides inventors with more opportunities to explore the market and make informed decisions regarding patent protection.
Costs and Consequences of Pursuing Global Patent Protection
It’s important to note that worldwide patent protection is more expensive than domestic protection in the United States. Annuities, which range from $500 to $3,000 per year, are required in many countries to maintain the pendency of patent applications. These costs can add up quickly, and annuities do not grant enforceable rights against third parties. Even after a patent application matures into a patent, maintenance fees or annuities must be paid to maintain the patent grant.
By declining to pursue foreign patent protection, inventors can avoid costs and keep their US patent applications confidential until they mature into patents. However, it’s worth noting that if the inventor intends to seek patent protection abroad, the USPTO will publish the patent application upon request before the patent is granted. Keeping a patent application confidential prevents competitors from accessing information about the application’s status.
In conclusion, while it may be advisable for some startups and solo inventors to preserve their ability to pursue worldwide patent protection, aggressively seeking patent protection in every country is generally not recommended due to the substantial costs involved and the uncertainty of success in foreign markets.
For more information about patent protection and advice tailored to your specific needs, feel free to contact me at (949) 433-0900 or visit the Garrity Traina website.
Disclaimer: This article is for informational purposes only and does not constitute legal advice. Please consult a patent attorney for professional guidance.