C3 Patent and Intellectual Property Law

May052009 | Steve O'Donnell

I want an international patent, I think

If the first question asked by new inventors is “how much is this going to cost?” the second question is “can I get an international patent?” The answer is, well, there isn't such a thing, but we can try to get patent protection in a few countries. The question then becomes “does it make any sense to do so?”

The first thing to think about is the costs associated with multi-national patent protection. Since there isn't a single “international patent” available, you need to instead seek patent protection in each country that interests you. There are currently 141 countries that are members of the Patent Cooperation Treaty. Very generally, you'll probably spend as much obtaining a patent in each foreign country as you'll spend getting a US patent. A fair estimate is $15,000 per country, maybe more. In theory, one could get patents in each of those countries, at a cost of over $2 million.

Assuming that the additional cost doesn't dissuade you from filing applications in at least a few foreign countries, you also need to consider what countries you want? A common suite of countries would be the US, Canada, England, France, Germany, Japan, and maybe China, India and Italy. Other countries can also be an option if your business or your competitors' maintain offices there. Of course, if you're not going to do business in other countries, then you probably won't benefit at all from international protection.

Often, just pointing out that a US patent will give you the right to keep infringing good from coming into the US will satisfy concerned intellectual property owners. If you're still on the fence, consider that in addition to a US patent, that you also obtain a German patent. If you don't do business in Germany are you going to be out anything if your patent is being infringed by a German company? Would you even find out if your German patent was being infringed? If you did discover infringement, are you willing to hire a German attorney to sue?

There are certainly instances where it makes sense to get patents in other countries. For instance it probably makes sense if your company has an overseas presence or if there are plans to expand internationally. Patents in multiple countries can also increase your intangible assets without necessarily increasing R&D.

There are precautions you need to take if you think you want international patent protection and plans you should make. Your patent attorney can describe the requirements in greater detail help you decide if this makes sense for your invention.