How Can I Get a Patent in a Foreign Country?

Patents are territorial. That is, a patent is only enforceable in the single country from which it has been issued. Because the economy has become so global and the economies of other countries are nearly as robust as ours, most United States inventors are interested in filing their patent applications in foreign countries. Unfortunately, foreign filing of patent applications requires the payment of government and the attorneys’ fees for each country, which comes at a hefty price tag.

Fortunately, there is a process that allows United States inventors to protect their foreign filing rights while delaying the need to pay these heavy fees. The process is performed under the Patent Cooperation Treaty (PCT). Once an applicant files an application under the PCT, the applicant then has a full 18 months before they have to make their decision as to which countries they are going to file in and, most importantly, pay the fees for doing so. The PCT application must be filed no later than the 12 month anniversary of the first US application. As a result, the PCT allows a US applicant a full 30 months from their first filing date before they have to incur the expenditure of the multiple foreign filings.

Another advantage is that the PCT application receives relatively quick examination. The applicant can choose from several international search authorities, all of them providing faster examination than the US patent office. The most expensive of the international search authorities is the European Union. Although it is expensive, it is highly recommended for those inventors wishing to file in the European Union because no further search is conducted once the application is nationalized (filed in Europe). In other words, if you are approved at the PCT stage, you will be approved in the EU later. A less expensive search authority is Korea. Although a decent search is done by the Korean searchers, a secondary search will be performed by each country once the application is moved into the nationalization stage. So a clean PCT report is still an uncertainty in terms of ultimately being granted a patent.

As an alternative to PCT filing, the applicant can take the patent application directly into the foreign countries and skip the PCT cost. The strategy works well if the inventor knows he is only interested in one or two countries and has a high confidence level that this patent will be allowed. In that case, there is no reason to delay.

In the end, foreign filing decisions must account for a number of factors and needs to be thought out so that it fits your budget and timing requirements. We do generally recommend selecting the European search authority.