How do you file foreign patents cost-effectively?
It’s no secret that obtaining foreign patent protection is highly expensive. Most clients are under a limited budget, seeking to stretch their money as much as possible to seek smarter patent protection. Is there a smarter strategy to file foreign patents? How can you procure international patent rights at lower costs?
How can a PCT application save foreign patent costs?
Most patent filers understand the international PCT application as a cost deferral mechanism that pushes back foreign filing deadlines. What you might not know is that the PCT can be a cost-saving tool. How? The PCT examination process gives the applicant opportunities to see relevant prior art and amend claims accordingly before filing foreign patents.
During the initial examination stage of a PCT application known as Chapter I (“chapter one”), a prior art search report will be issued by the International Search Authority. Known as the International Search Report (ISR), this document will reveal how your PCT claims stack up against the prior art. Similar to an Office Action by the USPTO, the ISR will show which claims are allowable or rejected, and identify the prior art references used to reject the claims.
Don’t ignore the ISR. Use that valuable information to amend your PCT claims to get them in a better condition for foreign filing. By doing so, you will likely save time and money by reducing the number of rejections in each foreign patent application.
Choose your foreign countries wisely
Where do you see your patent-pending invention having the most commercial potential? Which countries will likely have greater sales? Do you care about blocking the manufacturing of your invention in any particular country?
These are some of the important questions to ask to pare down the list of potential foreign countries to pursue.
In deciding which countries to select, you may also need to consider the possibility of an international business partners. For example, perhaps a larger company may desire to license your invention in order to make or sell product overseas. Therefore, the prospect of future business might justify the cost of the initial foreign filing to reserve rights in certain countries.
Should you file a utility model?
Want to skip examination and go straight to utility patent rights? A utility model may be a cost-effective way to obtain foreign utility patent rights automatically. Instead of responding to rejections, a utility model is granted without question.
In some countries, you may be able to file a utility model and utility patent application simultaneously. If and when your utility patent is granted, you can abandon the utility model then.
A list of utility model countries can be found here. US filers may be pleased to know that utility model countries include European countries, China, Japan, South Korea and Mexico.
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