Neustel Law Offices
1-800-280-1711

International Patents

Is there such a thing as an International Patent that provides international patent protection?  Unfortunately, the answer to this question is no.

There currently is no single international patent you can get that provides worldwide patent protection.  While there is no such thing as an international patent, there are some international patent applications you can file that can help acquire patent rights in foreign countries.  When seeking international patent protection, you have three main options:

  1. File Directly in Foreign Countries.  File foreign patent applications directly in the country(ies) you want patent protection in.
     
  2. PCT Application.  File a PCT Application (a.k.a. "international application") then later directly in the countries you want foreign patent protection in.
     
  3. EPO Application. File a European Patent Application then later directly in the European countries you want foreign patent protection in.


Option 1: File Directly in Foreign Countries

The simplest method of receiving a foreign patent is simply to file directly in the foreign country.  However, this needs to be done within one-year of your U.S. filing date for utility patent applications (for design patent applications the time period for filing foreign patents is only six months).  If you are planning to file in less than five countries, directly filing in each country is typically the fastest and most cost effective route to take.


Option 2: Patent Cooperation Treaty (PCT) Patent Applications

The Patent Cooperation Treaty (PCT) of 1970 is an international patent law treaty that provides a "Contracting State" (i.e. member country) a unified procedure for filing patent applications in each of the Contracting States (see Listing of PCT Member Countries and our Listing of Countries NOT Members of PCT).  A patent application filed under the Patent Cooperation Treaty is called an international patent application or PCT application.

You can learn more information about the Patent Cooperation Treaty at the World Intellectual Property Organization (WIPO).  There is a PCT Timeline which shows the relevant dates for filing a PCT application and also when you need to file national patent applications during the national phase.

The PCT application route is the most cost effective in situations where you have to file in more than five countries and/or you do not know what countries you want patent protection in yet.


Option 3: European Patent Applications

The European Patent Convention (EPC) of 1973 multilateral treaty instituting the European Patent Organisation (EPOrg) and providing a legal system of which European patents are granted.  The European Patent Organisation has two organs: the European Patent Office (EPO) which acts as the executive body to grant European patents, and the Administrative Council.  As of July 2009, there are 36 Contracting States participating in the EPC.

While a European patent is granted under the EPC, a European patent does not provide any legally enforceable rights.  A European patent is mainly used to establish patent rights in individual European states which have the right to approve, modify or disapprove of.  The main benefit of a European patent application is that a single patent application, in one language, may be filed at the European Patent Office (EPO).

The EPO application is best to use in situations where you mainly want European patent protection and you do not know which European States you would like patent protection in.


What Type of Foreign Patent Protection Should You Apply For?

Below are a series of questions to help you determine what type of foreign patent protection you should seek.

  1. Do you want to file in more than five countries?
    • Yes.  Proceed to (3).
    • No.  Proceed to (2).
  2. Do you know what countries you want to file in?
    • Yes.  Consider directly filing in each of the foreign countries instead of filing a PCT or EPO application.
    • No.  Proceed to (3).
  3. Do you intend to file in any countries that are not part of the European Patent Convention (EPC)?
    • Yes.  Consider filing a PCT application (you will have to file directly in any country that is not a PCT Contracting State).  Alternatively, consider filing an EPO application plus filing directly in the countries that do not contract with the EPC.
    • No.  Consider filing an EPO patent application (you will have to file directly in any country that is not an EPC Contracting State).

  

Typical Costs for Foreign Patent Application Filings

Below are some typical cost ranges for filing a PCT application, a European application or directly in some countries (the estimates below do not include subsequent prosecution of the patent applications or annual annuities).  These fees are simply typical fees and do not guarantee that your patent application will cost the same.  The total cost depends upon various factors including legal time, length of the patent application and the number of claims.  These are not formal quotes and are merely rough estimates.  You need to get a formal fee quote if you want to file in a foreign country.

Application Type Typical Cost Range
Patent Cooperation Treaty (PCT) Filed in United States $5,000 - $6,000+
European Patent Application $6,000 - $8,000+
Canada $1,000 - $2,000+
Mexico $3,000 - $5,000+
Japan $8,000 - $12,000+
Australia $3,000 - $4,000+
South Korea $6,000 - $8,000+
India $3,500 - $5,000+
Taiwan $4,000 - $6,000+
China $5,000 - $7,000+
Germany $5,000 - $7,000+
New Zealand $3,000 - $5,000+
Brazil $3,000 - $5,000+
South Africa $2,000 - $4,000+

 

Michael Neustel is the founder of the National Inventor Fraud Center, Inc.