If you have a lot of experience with patents you may know this but one of the most frequent questions I get from inventors and small business owners that only vaguely know patents is "How do I get foreign patents?".

The next question tends to be is "Should I get foreign patents?

Let's focus on the first question first.

The answer is not simple. But let me try to make it somewhat simple.

When you file a U.S. patent, a clock starts ticking. In 12 months you have to do something in order to file foreign. You should in fact make your decision by about month 10 so you have time to do it right.

So Why Is It 12 Months?

In 1883 an intellectual property treaty called the Paris Convention was ratified by many of the world's industrialized nations. The Paris Convention allows an inventor in any member country to file a patent in their home country and then be able to file in other member countries 12 months later. The foreign filings are assigned a priority date corresponding to the date of their home filing. This means that any information that becomes public after that priority date can not be used against those foreign filings. Or in patent parlance that public information cannot be part of the prior art for that patent.

The Paris Convention was a big step forward for inventors. Most inventors are reluctant to go to the big expense of filing both home country and foreign patents early in the patenting process. They don't yet even know if that have a valid patentable idea. Furthermore they don't know if there is a market for their idea. It is like playing poker and having to make all your bets before seeing all of your cards. And filing foreign patents is an expensive proposition. More on that later. The Paris Convention gave inventors a chance to see a few more cards before placing their big bet.

But only a few more cards. As the time needed to get a validity opinion from your friendly national patent office grew year by year, and the time required to commericalize ideas increased the 12 month reprieve was not that big of a benefit in most cases.

Enter the Patent Cooperation Treaty (the PCT)

In 1977 a new treaty, the PCT was signed by many countries. The PCT process basically allows you to put a fairly modest (~ $2200) ante into the poker game to buy time to see more cards before your big bet. Twelve months after filing your home country patent you can now elect to not file foreign patents but instead to file a PCT application to the World Intellectual Property Organization (WIPO). After filing a PCT application (which never becomes a patent - it is only a placeholder) the inventor now can delay the foreign filing decisions an additional 18 months.

Thus foreign patent filings can occur 30 months after the original home country filing. But all of the foreign filings will have the priority date of the original filing. Again the inventor is protected as to prior art dates, and the protection is all the way back to the filing date in the home country.

Should You Use the PCT?

Like many other business decisions the answer is a very definitive "It depends". If you are a U.S. filer and only intend to get one or two foreign patents - say Canada and Mexico, you may decide to save the ~$2220 and file directly in those countries after 12 months. But for small businesses that get at least 4 or 5 foreign patents the decision is often to go the PCT route. All of my clients are now choosing PCT instead of direct filing. And it sometimes is clearly the right decision because when they see those extra cards they learn that the market they assumed would be there is not or the commercialization of their invention was more daunting than they thought, or they learn form the U.S. Patent Office that there is some daunting prior art to get over.

This is a rather simple overview of foreign filing strategy. In a future newsletter we will explore some of the strategic filing options.

Want to know a little more about the PCT - read about it here. on the Business of Patents website.

Why is the foreign filing decision is a tough one for small companies. See Foreign Patents - Part II on the Business of Patents website. As you might expect it is a cost issue.

In future newsletters we will delve into many other aspects of patents and patent law that might be useful for you to know. Patent law is not rocket science - but it is not always intuitive either.

Regards

Mike Ervin