Once a startup enterprise or small company has decided to file for patent protection in the United States, a common question for consideration is whether it should also file in foreign countries. As the world economy and markets expand, considering such protective action is becoming increasingly important. However, due to the potentially high costs involved, this decision should be made carefully, based on present and future business considerations.  

Making the Decision

Deciding whether or not to file for international patent protection is a business decision and should include careful consideration of the costs and benefits of a patent in the specific foreign country where the patent is filed. For example, many potential foreign partners may want patent protection in their respective countries before considering joint ventures and the like with U.S. companies. However, many foreign countries impose higher maintenance fees for patents than the U.S. Patent maintenance fees are the periodic fees paid to maintain the patent application or the issued patent during their respective life spans; and, due to their periodic nature, maintenance fees can become a significant investment.

Additionally, enforcement of a foreign patent against infringers in the foreign country may be problematic because of costs, distance, and differences in legal and political systems. By way of comparison, a U.S. patent will allow an owner to stop acts of infringement within the U.S. when the infringing acts include the manufacture, use, sale, or offer for sale of any product covered by the patent. The infringing activity that a U.S. patent cannot stop is the manufacture, sale, or use that takes place completely outside the borders of the U.S. Since the U.S. is the largest market in the world, it is a rare occurrence for infringing products to stay completely outside its borders. Consequently, in most instances, a U.S. patent will offer sufficient protection for most companies unless they have existing or imminent business prospects in foreign countries.  

A Cost-Effective Option

Given the potential for higher costs and for diminished levels of protection from infringement, it is not always financially feasible or in a small company’s or startup enterprise’s best immediate interests to file for patent protection in specific foreign countries. However, there is an option which provides protection in over 140 nations under the Patent Cooperation Treaty (PCT). One benefit of applying for PCT protection is that the PCT application is similar to the content and format of a U.S. patent application. This similarity often results in significant cost-savings for applicants, since little or no additional patent drafting may be required. Most developed nations are signatories to the PCT and recognize PCT patent applications as a mechanism to obtain patent protection within their country. However, the most prominent non-signatories of the PCT are Taiwan and Argentina. For this reason, a company seeking patent protection in either of these countries should consider filing a patent application directly with the appropriate national patent office.  

Timing Considerations

Applicants must file for PCT protection no later than 12 months after the first filing date of the corresponding U.S. patent application, including the filing date of any provisional patent application used for a priority claim. If no provisional application has been filed, the PCT filing can be delayed for up to 12 months after the filing date of the U.S. application. However, there is no requirement to wait the full 12 months before filing; the PCT application can be filed simultaneously with the related U.S. application. After the PCT application is filed, a search report that details the relevant prior art and an examination opinion will be sent to the applicant. Then the applicant will have an opportunity to amend the scope of the patent application or rebut the examination opinion, or both. These activities typically occur between 9 and 20 months after a PCT application is filed.

It is important to remember that the owner of a corresponding U.S. patent application has a continuing duty of disclosure that requires the owner to disclose to the U.S. Patent Office any “prior art” that may have an impact on patentability. This means that the applicant has a duty to disclose the results of the PCT search report to the U.S. Patent Office for the corresponding U.S. application (assuming any previously undisclosed “prior art” is included in the PCT search report).

Converting the PCT into a National Patent Application

There is no single “international” patent—each nation has its own specific patent laws, patent application procedures, patent infringement requirements, and patent enforcement procedures. The PCT application process allows an applicant to file one application for the various foreign nations that have signed the Patent Corporation Treaty (so-called “signatory nations”) and then to designate which of the signatory nations will receive the application. This selection or designation of individual countries begins the “national phase.”

The final step in the PCT process is filing the PCT application as a “national phase” patent application. The PCT application itself does not issue as an “international” or any other patent. Instead, the PCT application, the search report, the examination report, and any amendments and rebuttals to the PCT examination report are submitted to individual national patent offices of PCT signatory countries that the applicant selects. The national patent offices of the selected countries then finalize the prosecution of the “national phase” application and issue a patent from their respective countries. Entering the “national phase” is typically required no later than 30 months after the filing date of the PCT application. However, some nations have extended this deadline to 31 months.  

A significant benefit of the PCT system is that the applicant is not required to designate the individual countries in which it will file a patent application until this final, “national phase” step. Thus, the PCT application system gives the applicant, in effect, a 30-month option in which to decide where to pursue patent protection from among approximately 140 countries—that is, almost anywhere in the world.

Pursuing patent protection is an important step for any small company or startup enterprise. Filing for foreign patent protection typically should not occur without solid business prospects outside of the U.S. However, the PCT application process provides companies with an efficient method to file for patent protection while not having to commit to any particular country until 30 months after the PCT application filing date.