In today’s global economy, the importance of international patent protection cannot be overstated. Your invention could be conceived of with a workforce distributed across several continents. Your manufacturing could occur in Asia or India, while your products are shipped into and distributed from ports in the target markets of the world’s largest economies. Competitors and infringers could be next-door neighbors or perhaps across the pond. But as you’ll learn today, there is no such thing as an International Patent – no one global patent that protects you everywhere. If you want to protect your rights in a particular country or jurisdiction, you need to get a patent in that particular country or jurisdiction.
But how do you choose where to file? How long do you have to decide? What pathways exist for filing internationally? How do you pursue international protection in an intentional, strategic, cost-effective manner that won’t break the bank? And what should you be thinking about now, while drafting your patent to set yourself up for the greatest odds of success once on the international stage?
Episode Overview: Your Travel Guide to Foreign Protection
Dr. Ashley Sloat, Aurora’s very own international patenting tour guide, leads today’s discussion with our all-star patent panel, traveling from the U.S. to Europe, Africa, India, East Asia, Australia, and everywhere in between, exploring the intricacies and nuances of ensuring your patent rights are protected everywhere it matters. Along the way, Ashley and the panel discuss:
- Reasons for pursuing international protection.
- Choosing locations for a cost-effective international strategy.
- Foreign filing deadline and strategy pointers.
- Common pathways for foreign protection including, the Patent Cooperation Treaty, the Paris Convention, the European Patent Convention, Unitary Patents, and the African Regional Intellectual Property Organization.
- Advance considerations in terms of drafting your patent and the international risks of public disclosure.
- Political event considerations, such as tariffs, trade wars, and Brexit, and how they can impact your patent strategy.
This is part one of a multi-part series on international patent protection. We’ll be following up later this year with a European-focused episode, and we’re considering covering China, as well.
Why Pursue Foreign Patent Protection?
Patents are jurisdictional property rights, so the rights they convey are constrained to the issuing jurisdiction. For example, a U.S. patent only grants the right to exclude others from making, using, selling, and importing the claimed invention within the United States. It has no bearing on activities performed in Canada, Mexico, China, or anywhere else in the world. To restrict activities there, you will need a patent granted in each of those countries.
Cost-Effective International Strategy
As with so many aspects of patenting, your international IP strategy should be closely linked with your core business strategy. Foreign filing is expensive, and costs associated with foreign counsel, fees, and translations can add up quickly, so blindly casting a wide net is going to be cost-prohibitive for most startups. The following are some questions to consider when dialing in your international filing strategy in the most cost-effective manner possible:
- Sales and use. Are the target customers in that country? If someone were infringing on your patent there, would you be willing to enforce it?
- Competitor presence. Is there real competition there?
- Foreign partnerships. Certain countries are more nationalistic, and obtaining a patent can be a sign of respect for a country’s property rights when securing foreign partnerships.
- Where will your invention be made?
- Customs authorities can help block imports at major ports – are there effective means of doing so in the target jurisdiction?
- Exit strategy. Where do companies file that may buy or license your company or IP?
- Invention-specific considerations. Patentable subject matter can vary by jurisdiction. For example, if part of your innovation is a method of treatment, you are far more limited in places where you can go.
Foreign Filing Sharp Corners
While this could be an episode of its own, there are many sharp corners to be aware of if you’re used to only thinking about patenting in the U.S.
- Foreign filing deadline. You must file internationally within ONE YEAR of your priority date! Missing this means losing foreign rights permanently. U.S. provisional applications start the timelines for both PCT and Paris Convention filings.
- Public disclosure. Keep in mind that certain countries do not have a grace period for prior public disclosure or sales activities. ?If you’ve been publicly disclosing your technology before your earliest date, you may also have lost your foreign filing rights.
- Foreign filing licenses. Many countries, including the U.S., require inventors to receive special permission to file with patent offices outside of the inventor’s – or invention’s – country. A foreign filing license is a government-issued document that grants permission to inventors and companies to file in foreign countries. Failing to obtain this permission can result in serious consequences, including fines, patent revocation, and even imprisonment!
Foreign Filing Pathways
Applying directly to other foreign jurisdictions is rarely the first step and is often illegal. After filing a patent application in an invention’s home jurisdiction and obtaining a foreign filing license, most inventors will proceed through one of two different pathways:
- Patent Cooperation Treaty (PCT) filing protects filing rights in 150+ countries. It is filed via World Intellectual Property Organization (WIPO) and pends for 18–30 months. A PCT Gives time for planning and country selection and leads to national stage filings with priority claims dating back to the original filing.
- Paris Convention filings are an alternative to the PCT, with direct filing in each country within 12 months. This approach is faster, but less flexible. It may present more expense up front (instead of delaying) but is the only route for non PCT-participating countries like Taiwan.
National Phase. An application must eventually be filed in each target country or jurisdiction after the PCT period. Each becomes a separate national case, with its own matter, serial number, and associated costs, effectively separating and becoming its own entity at this point.
Many other, but less common pathways include the European Patent Convention, Unitary Patents, and the African Regional Intellectual Property Organization – all of which the panel discusses in depth.
Discussion Panel
Ashley is joined today by our always exceptional group of international IP experts, including:
Mossoff Minute: A Friend to Inventors
In this month’s Mossoff Minute, Professor Adam Mossoff discusses Secretary of Commerce Howard Lutnick’s remarks at the National Inventors Hall of Fame Induction Ceremony, and what this positively signals for the near future of innovation policy. We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok.
Related Listening and Reading
To further explore the topics discussed, see the following past episodes and resources:
- License to File. A deep dive on foreign filing license requirements. Also, check out our free resource on filing requirements, broken down by county.
- ITC Proofing Portfolios. Setting your portfolio up for future success at the ITC should you need to block the import of infringing products.
- Public Disclosure Risk. Unlike the U.S., many jurisdictions do not have grace periods for public disclosure.
- Continuation Practice. Creating more robust and valuable patent families using continuations (not available outside of the U.S., but discussed in the episode).
- Patent Prosecution Timeline. Detailed prosecution timeline outlining the duration from filing to issuance, including ranges for PCT, Paris Convention, and national examination.
- Patent Anatomy. What’s in a patent? Deep dive guide into the parts of a patent and how they connect.
