Los Angeles International Patent Attorneys

Southern California IP Lawyers Skilled in Foreign Patent Filing & PCT Applications

Patent applications are jurisdictional, meaning they are only effective in the country where the application was filed. Therefore, you must file a separate patent application in each country you want to gain patent protection. Given that the patent laws in other countries vary, both in terms of substance and complexity, it is important you avail yourself of the benefits that an experienced Los Angeles international patent lawyer will bring to the table. 

At Cohen IP Law Group, we have decades of combined experience assisting clients nationwide in obtaining international patents. We command an impressive knowledge of U.S. patent law and the subject matter in general, which allows us to confidently navigate whatever challenges you’re facing in obtaining an international patent. 

Why File a Foreign Patent Application?

As a preliminary matter, there is no all-encompassing international patent, and, in general, a patent is only effective in the country where it was filed. So, a patent application filed in the U.S. would only have legal effect in the United States. That being the case, to obtain foreign patent rights, you must file a patent application in every country you want protection because the patent laws of each country are different. Alternatively, a single patent filing under the Patent Cooperation Treaty applications (PCT) can be made designating multiple foreign countries. 

One of the primary reasons many of our clients choose to file for a patent in a foreign country is to gain patent protection in countries where they do business or plan to do business. For example, filing a patent and obtaining a patent registration in a country in which you conduct business may allow you to enforce the patent against infringers. A foreign patent can also be used for defensive reasons, as well. Finally, sometimes a foreign patent may provide you with credibility or gravitas, for example, if you are hoping to conduct business with foreign governments.

Below are some of the most common reasons why you may want to consider filing for an international patent:

Global Market Protection: If you have a product or technology that has potential market value in countries other than the United States, you’ll want to ensure that competitors in those countries can’t copy it without facing legal consequences.

Increased Business Value: Holding patents in multiple jurisdictions can significantly increase the valuation of a business, especially if you’re seeking foreign investors or considering selling your business.

Licensing and Royalties: If you don’t intend to commercialize your invention in a foreign country yourself, you might still benefit from licensing it to others in that country. Holding a patent gives you the leverage to negotiate potentially profitable licensing agreements.

First-to-File System: Many countries operate on a “first to file” rather than a “first to invent” system. This means that if two inventors come up with the same invention independently, the one who files the patent application first will be granted the patent rights.

Prevent Unauthorized Production: Even if you don’t intend to sell your product in a particular country, that doesn’t stop someone else from manufacturing it there and then exporting it elsewhere. By holding a patent in that country, you can prevent unauthorized production.

Strengthen a Global IP Portfolio: A strong international patent portfolio can deter potential competitors from entering the market and can position your company as a leader in its industry.

Potential for Strategic Alliances: Holding patents in multiple countries can open doors for strategic alliances with foreign companies, such as joint ventures or co-development agreements.

Meet Investor Expectations: Investors often expect companies that operate in global markets to protect their IP assets internationally. They may see this as an indicator of the company’s forward-thinking and commitment to its IP.

Diversify Revenue Streams: By holding patents in multiple countries, companies can diversify their revenue streams, mitigating the risks associated with market fluctuations in a single country.

Enforceability: If someone infringes on your patent in a foreign country where you’ve filed, you have a legal basis to take action against them in that jurisdiction. Without a patent in that country, you may have little or no recourse.

Which Countries Should I File for an International Patent?

Simply stated, a patent application should be filed in any country in which you desire to enforce your patent rights, but there are many other considerations. First, consider where you are currently or planning to conduct business, such as where you will conduct sales, the location of the customers, or other transactions, such as manufacturing. Other considerations include where your competitors are located and whether the patent will be used for offensive purposes or to obtain revenue from licensing or selling.

Realistically, a cost-benefit analysis must be conducted as foreign patent fees can be significant—especially if you are seeking patent rights in multiple countries. Further, not all countries or jurisdictions have a sophisticated patent system that provides an effective enforcement mechanism. 

Thus, your company’s overall patenting goals should be reconciled with the company’s budget, an analysis of the patent jurisdiction, a determination of competitors or licensing targets in target countries, and whether there are particular time constraints that may prohibit the patent filing beyond a certain time period. 

But as a general rule of thumb, most companies consider the United States and Europe (EPO) the two critical locations for patent filings. Other countries to file may depend upon the type of invention that is being protected. For medical device filings the EPO, Japan, China, Korea, Canada, Mexico, and Australia tend to have filings, whereas “tech” patents are typically filed in the EPO, Korea, Japan, Taiwan, India, China, Canada, Brazil, Russia, and Australia.

How to File a Foreign Patent Application

There are two ways to file for an international patent: a direct filing with the target country and through the Patent Cooperation Treaty. 

Direct Patent Filing in a Foreign Country

If you intend to file in one or two particular foreign countries, then filing directly in those foreign countries makes sense. However, this must be done within twelve months from the earliest filing date of the U.S. application. Often, the foreign corresponding application is filed shortly after the initial U.S. filing once the Foreign Filing License is received. 

The costs for foreign patents are extremely high due to the official government filing fees, possible translation costs, and the fees for the patent attorneys or agents in those countries. As such, if the intended filing is done in multiple countries, and you are not sure which countries you want to commit to yet, direct filing will be very expensive and time-consuming. In that scenario, filing a Patent Cooperation Treaty application (PCT) may likely be a better alternative.

Patent Cooperation Treaty (“PCT”)

The PCT was developed to streamline the foreign filing process. Filing a single PCT application within twelve months of the U.S. application will give you the earlier priority date of the U.S. application for all PCT member countries. For example, if you want patent protection in six different countries, you can file a single PCT application, assuming those countries are members of the PCT. The effect will be that each country will assume the priority of the earlier filed U.S. patent application date. Currently, there are 157 countries that participate in the PCT. 

Once you file a Patent Cooperation Treaty application, you will have a total of 30 months (31 in some countries) from the U.S. filing date to file a National Stage application in each country individually. The main benefit is that you are able to defer the need to finalize this decision. This is tremendously helpful because if you do not currently have the budget to file in multiple foreign countries, one PCT application can secure your right for 30 months while you decide what countries are actually worth pursuing. A caveat to the PCT is that at least one patent owner or inventor must be a US citizen or resident, and if not, the PCT application must be filed elsewhere.

When Should I File for an International Patent?

Determining when to file for an international patent is perhaps the most important issue you’ll face when seeking foreign patent rights. Generally, you should file within twelve months from the date of the earliest priority filing date. So, if your first application was a U.S. utility patent application, then the deadline would be twelve months from that filing date. 

Assuming you timely file the PCT application, under the Paris Convention, your foreign application will have the same filing date as the earlier filing date. The foreign application must be filed within one year of the provisional application if a provisional application was first filed. For direct filings, a Foreign Filing License must be issued prior to filing an application in a foreign country. However, a Foreign Filing License is not required when filing through the PCT because the PCT application is filed via the USPTO.

Are You Seeking an International Patent?

If you are hoping to obtain patent protection in a foreign country, it is imperative that you do your homework well in advance of filing. Given the jurisdictional variances, time requirements, and budget constraints involved in international patents, even a small mistake can be devastating. At Cohen IP Law Group, our Los Angeles international patent lawyers have extensive experience helping businesses of all sizes effectively file intentional patents. We routinely represent Fortune 500 and midsize companies, as well as emerging startups and entrepreneurs in foreign patent applications, and have a strategic understanding of the various options you can take to make your IP goals a reality. To learn more, give us a call to schedule a confidential and no-obligation consultation at 310-288-4500. You can also connect with us through our online contact form.