Choosing patent foreign countries

A US patent provides a patent owner with rights only in the US. That might be enough for patent owners who do not care about sales or manufacturing of infringing products done in foreign countries. But, what if you do care about infringing activity happening abroad? You will need to file patent applications in those countries in order to stop others from making, using, selling your patented product outside the US. Let’s consider the factors for wisely choosing foreign patent countries.

How to make wise foreign patent decisions

A patent right is exclusive in nature. More specifically, a patent provides an owner with the right to stop others from making, using, selling or advertising the patented invention. So one factor in determining which foreign countries to select is to consider the value of stopping the sales or manufacturing in a particular country.

Here are some factors to consider in selecting patent foreign countries:

  • How important would it be to your business to block competitors from selling patented products in a particular foreign country?
  • Would it provide your business with a competitive advantage or moat to stop others from manufacturing in a particular country? For example, if you can force others to move the manufacturing out of a country such as China to a different region, would such a move cause competitors to increase their prices or lengthen the process?
  • Does your product require certain raw materials located in a particular country?
  • If the demand for your product is located only in the US, do you really care about stopping the manufacture in other countries so long as you can block domestic sales with your US patent?

Does foreign patent enforcement matter?

Maybe. Most US patents are never litigated, and I would estimate that the same would be true of foreign patents. The value of foreign patent rights may lie in potential licensing deals with foreign partners or international companies. If your exit plan is to seek an acquisition by a larger company, then patent-pending foreign rights may boost the value of your company.

Consider foreign patent costs

Keep in mind that the initial filing of foreign patent application is only the beginning of a likely long and expensive process. There might be effective ways to control ongoing international patent costs, but you can expect that there will definitely be further costs after the initial filing.

Expect that the initial filing of a utility patent application will cost between $2,500 to $7,000 for each country. You can file a single European patent application with the European Patent Office (EPO) to cover EU countries until the application is allowed. After allowance, you will then to decide and pay for each desired EU country.

For utility patents, one option to reserve international patent-pending rights while deferring costs is to file an international PCT application.

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Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and founders with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com