Protecting patent rights in a global economy presents significant challenges. In the days when a company invented, manufactured, and sold its products solely within a single country, it was sufficient for that company to obtain patents in that country alone. Now, if you launch a web site that uses breakthrough software technology, that web site is accessible and the underlying software potentially subject to being copied instantaneously anywhere in the world.
A U.S. patent generally only protects you against activity in the U.S. As a result, if you own a patent on an invention and want to stop someone else from using your invention in another country, typically you must first obtain a patent in that country. One way to protect your patent rights in these circumstances filing patent applications in multiple countries at once can be effective but also costly and risky. Costly because the patent offices, lawyers, and translators in each country will charge you a fee, and risky because at the time of filing you might not yet know the commercial value of the product or service covered by the patent application.
Fortunately, there are ways to manage these costs and risks. In most cases it is possible to begin by filing a patent application in a single country, such as the U.S., thereby preserving your patent rights in most other countries for another year. This reduces your initial cost to the price of a single patent application, while giving you time not only to determine how valuable patent protection for your invention will be, but also to obtain the funds necessary to seek patent protection in additional countries.
One year after filing the U.S. patent application, you have several options. You may file the patent application directly in other countries, you may file the patent application in a regional patent office (such as the European Patent Office (EPO)), or you may file a Patent Cooperation Treaty (PCT) application. Filing in a regional patent office allows to you obtain patent protection in multiple countries in the region without incurring the expense and hassle of obtaining separate patents in each country. Filing a PCT application essentially acts as a placeholder, allowing you to defer the additional cost of filing patent applications in most other countries or regions for another 18 months or so.
For many would-be patent owners, the option of first filing a U.S. patent application and then filing a PCT application twelve months later provides the best of both worlds: it preserves patent rights throughout most of the world at a small fraction of the cost of filing patent applications in every country and postpones the choice of countries for about 2.5 years from the U.S. filing date.
This brief description of the options for reducing the cost and risk of seeking international patent protection demonstrates the fact that the range of options and their interactions with each other can be complicated. Robert Plotkin, P.C. regularly advises its clients on how to navigate a path through these options and how to budget for protecting their patent rights internationally. Should you have any questions or wish to discuss further how any of these strategies may apply to you, please contact Robert Plotkin, P.C.