Attention all companies interested in patenting in countries beyond the US: filing an international (PCT) patent application can allow your company to defer the decision (and the associated costs) to file a patent application in a PCT signatory country for up to 31 months from the PCT’s priority date. That can buy you more time to carefully investigate and select the countries in which file National Stage applications.
Other potential benefits of the PCT process include:
- Obtaining a relatively quick search report for the claims;
- Obtaining an equally quick patentability opinion that sometimes will strongly influence at least some of the national patent examiners; and
- Expending only a relatively modest government fee (considering the potential expenses associated with early filing in numerous foreign patent offices) particularly when there is a substantial risk the claimed innovation(s) will be found unpatentable.
Taking a step back, companies sometimes initially believe they must seek and maintain patent protection throughout the industrialized world. Yet given that there are roughly 196 widely recognized countries in the world, of which over 175 grant and/or enforce patents (nearly all of which are signatories to the PCT), patenting broadly can be extremely expensive, ultimately costing many hundreds of thousands of dollars.
As a result of those phenomenal costs and the corresponding diminishing returns associated with many of those countries, taking the “patent everywhere” approach can actually undermine the return on the investment for the resulting family of patents. In fact, even huge corporations tend to choose only a few countries for their top-priority patents and only very rarely file patent applications in more than 10-15 jurisdictions.
Prior to deciding where to patent, your company should carefully analyze the geographical distribution of the expected global market for products that embody each innovative concept, and seek to estimate demand, pricing, and profitability in each country of interest, as well as the competitive and legal landscape.
Various ranked lists of countries, which are freely available online, can assist with valuation, sales, and/or cost estimates. In addition, the CIA’s World Factbook, available from www.cia.gov/the-world-factbook/, provides dozens of ranked lists of countries, by topics such as: GDP growth rate, investment, inflation rate, industrial production growth rate, exports, imports, population growth rate, birth rate, life expectancy, education expenditures, internet users, military expenditures, etc.
By leveraging the PCT process strategically, your company can reduce upfront costs, gain valuable insights, and make more informed, data-driven decisions about where to seek foreign patent protection. If you’re considering foreign patent filings, consult with an experienced patent attorney to ensure you’re maximizing the advantages of the PCT system.