International Patent Filings
There are well over 140 countries in which you could file patents!
A patent is only valid in the country in which it was filed. If you have a US patent and have an infringer based out of Canada, you won’t be able to stop them with your US patent. (A great example of this is in the RIM/NTP Blackberry patent infringement case – for some of the claims, RIM didn’t infringe because their servers were in Canada). However, since filing patent applications in every single country on the planet gets pretty expensive, you should understand your options for managing costs and making smart filing decisions.
The PCT application
is one tool to preserve your options affordably. Over 140 countries have signed a treaty to cooperate with each other on patent filings and make it easier for their citizens to protect inventions abroad. Applications filed in accordance with the treaty are known as Patent Cooperation Treaty Applications (“PCT apps”). If you live in one of those 140 countries (which you probably do, since they include most of North and South America, most of Europe, Australia, and most of the Asias), you have one year from the date on which you file an application in your home country to file a PCT application, which gives you 18 more months to decide in which of those 140 other countries you’re going to file your application
. At the time that you file an application in your home country, and even a year later, it’s often way too early to know whether the product or feature incorporating the invention is going to be successful enough to warrant international patent protection. Therefore, most companies decide to file the PCT application and preserve the option to file internationally.
At 30 months from the original filing, you have to make your final decision about where to file – no extensions. At this point, look to revenue, client base, and competitor locations to make your filing decisions.
Got a huge client base in Europe, 90% of revenue coming from Singapore, an Australian investor that wants you to expand in Southeast Asia, or a big competitor in Canada? Those are all signs that you may need to invest in filing patents in those countries or regions. On the other hand, if you’re still boot-strapping the company, haven’t got much revenue anywhere outside your home country, or have an extremely country-specific technology, you might decide against making the investment. As with most patent-related decisions, look to your business objectives for guidance, consult with your attorney, and make the best decision possible given the resources available.
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