Procedures and Costs For Foreign Filing of Patent Applications

The first thing to remember about foreign filing of patent applications is that most foreign countries are absolute novelty countries, meaning that you must have filed your U.S. patent application before disclosing your invention on a non-confidential basis in order to avoid losing your foreign rights. That means, for example, that you need to file your U.S. application before you take your new product to a trade show if you think you might want to get patents in foreign countries. Then, for those countries which have signed the Paris Convention (almost all countries of interest except India and Taiwan), you have one year from your original filing date within which to foreign file your application (six months in the case of design patents).

In the good old days, there was only one way to do foreign filing, and that was to go directly to the country of interest and file an application there within one year of your U.S. filing date. Now, there are more options. First, there is the European Patent Office, which permits you to file a single application which can result in individual patents in several European countries. Also, it is possible to file an application under the Patent Cooperation Treaty, listing most countries of the world and to wait until search results are received from the international searching authority before having to spend large sums of money filing in the European Patent Office or in many individual countries.

What do we recommend? If you are only going to file in a couple of countries, such as Canada and Mexico, you will probably want to file directly in those countries before the one-year deadline. If you want to file in several countries in Europe, filing in the European Patent Office is most efficient. If you want to file In many countries, or if you want to preserve your foreign rights while you wait to see how the invention does in the market and what search results you get, then the Patent Cooperation Treaty (PCT) is preferable.

Filing a Patent Cooperation Treaty application listing most countries of the world costs about $4,000. No translations are required at this stage. For that price, you are buying time and a search from the European Patent Office. After you have seen how your invention sells, and you have seen what prior art the U.S. Patent Office and the European Patent Office have found, you should be in a much better position to decide whether it is worth spending $10,000 to file a European Patent Application or to file in other countries.

As a rule of thumb, you can expect that it will cost about $5,000 per country (plus translation costs) to obtain a foreign patent, not counting the $4,000 cost of filing an application under the Patent Cooperation Treaty. We can give you more detailed cost information upon request.

© Camoriano & Associates 1999