Applying for a patent in foreign countries

This document is not legal advice. This text is a general overview for typical situations and is a compromise between brevity and sufficient length and detail to provide useful information. This document cannot cover all fact situations, exceptions, or variations. For legal advice contact one of our attorneys.

After filing a patent application in the U.S. Patent and Trademark Office, an applicant also may want to obtain a patent for the same invention in one or more other countries. That can be done by filing a copy or a translation of your U.S. patent application in accordance with procedures described in one or more international treaties related to patents.

Under those treaties, as ratified by almost all countries of the world, you have one year from the filing date of your U.S. patent application to begin a procedure for obtaining one or more foreign patents. If you act within that first year and eventually complete the remaining steps, the foreign country will treat your application as if it had been filed in the foreign country on the same date as your application was filed in the United States. Application filing dates are very important in patent law. If there was any disclosure of the invention to others without a duty of confidentiality, or any offer to sell a product using the invention, or any commercial use of a process invention before the U.S. filing date, there is no value in most foreign filing because such an early public disclosure would destroy the right to get a patent in most foreign countries. If the invention was sold or became public only after filing your U.S. application, it is necessary to begin the procedure within that one year if you wish to seek any foreign patents. If the invention has never been made public, you still will want to begin the procedure under the treaties within the one-year time limit.

If your patent application in the U.S. was seeking a design patent instead of a utility patent, the time limit described in the preceding paragraph is six months instead of one year and the costs are substantially less than the following cost estimates.

There are three options for applying for a patent that is effective in countries that are foreign to the United States.

  1. Filing in National Patent Offices.
    Most countries have a national patent office. Within one year after your U.S. patent application is filed in the U.S. Patent and Trademark Office, you can file in the national patent office in nearly any country of the world. Our experience is that you can expect applications in English speaking countries to cost approximately $2,500-$5,000, and approximately $3,000-$6,000 for non-English speaking countries. Filing in some particular countries, such as Japan, may cost one or two thousand dollars more. If you are interested in filing a patent application in any foreign countries, we will give you a more specific cost estimate for each country before you decide whether to file.
  2. Filing in Regional Patent Offices.
    There are treaties among member countries in various geographical regions. Each treaty creates a single regional patent office in which patent applications can be filed and prosecuted in pursuit of a patent in its member countries. A European Patent treaty created the European Patent Office [] but it is not a part of the European Union. The treaty includes several non-EU members, such as the United Kingdom, in addition to members of the European Union. If you believe that you may wish to apply for a patent in two or more European countries, some cost savings may be accomplished by filing in the European Patent Office instead of in national patent offices of its member countries. The cost savings occur because the patent application is examined by one examiner and your attorney communicates with only one examiner regardless of the number of countries in which you want to get a patent. Filing an application in the European Patent Office is more expensive than filing in any single country and is approximately equal to the cost of filing in the national patent offices of two European countries. The more European countries above two in which you wish to seek a patent, the more substantial is the cost savings per country. Typically the cost for filing in the European Patent Office is $7,000 to $11,000, depending upon which fees are paid at filing and depending upon the length and subject matter of the patent application. Most of that cost is government filing fees and services fees for a foreign patent attorney. There are also other regional patent offices. They include (1) The African Regional Intellectual Property Organization (ARIPO) [] with 20 member countries; (2) The Eurasian Patent Organization (EAPO) [] with 8 member countries including Russia and neighboring countries; and (3) The Gulf Cooperation Council Patent Office (GCCPO) [] with 8 member countries.
  3. Filing an International Patent Application Under the PCT.
    For nearly all countries the initially least expensive way to preserve your rights beyond the one year deadline from your U.S. filing date is to file an international patent application under the Patent Cooperation Treaty. For most countries, a PCT application buys time by postponing the need and cost to later file in a national patent office or a regional patent office. The postponement is at least until 30 months after your U.S. filing date (i.e. 18 months after the one year deadline). However, before the expiration of that 30 months, a patent application would need to be filed in a national or regional patent office. The cost to file a PCT application is typically around $3,500 to $5000 most of which is government filing fees. Although the international patent application is an additional step and therefore an additional cost, it has at least two advantages. First, it buys an additional 18 months before a patent application must be filed in a national or regional patent office. This 18 months can be used to evaluate the commercial value of the invention and corresponding patents before incurring the greater cost of filing in a national or regional patent office. Second, an international patent application is filed in a standard form that is accepted by nearly all national and regional patent offices. Consequently, filing in a national or regional patent office after filing an international patent application does not require the expense of preparing a patent application in a specific format tailored to each specific patent office. Although the Patent Cooperation Treaty creates the concept of an international patent application, it never becomes an international patent because there is no such thing as an international patent. The PCT is available for preserving rights in most of the countries in which patent rights are commonly sought. A few countries have special additional requirements and these change from time to time. For more information see footnote 1 below.

As in the U.S., there are substantial expenses after filing foreign patent applications. There is the cost of dealing with patent examiners after the applications are substantively examined for patentability. If the patent application is allowed, there is also the cost of issuing a patent and the cost of annual maintenance taxes. If an application is allowed in Europe, you choose the countries in which you want the European Patent to be effective and you pay only for the chosen countries. If you choose only a few countries, the cost is less. There are 38 countries that are members of the European Patent Organization. A patent can be issued from an allowed European patent application for any of those 38 countries and an additional 6 more countries. The total cost for issuing a European patent can range from $5000 to over $100,000 depending upon how many of the 44 countries you choose. Most clients choose only 2 to 5 countries.

[footnote 1] The PCT is available for preserving rights in most of the countries in which patent rights are commonly sought. A few countries have special additional requirements and these change from time to time. Luxembourg, Switzerland, Uganda, United Republic of Tanzania and Zambia, require that we request examination under the PCT and pay the fee for it to obtain the full postponement. Such a request for examination must be made within 18 months of the U.S. filing date and would cost on the order of $1,000-$1,500, depending in part whether we also amend the patent claims to incorporate any changes we made by then in the U.S. patent claims. However, if an application is filed in the European Patent Office, then Finland, Luxembourg, Sweden and Switzerland do not require that examination request. Some countries are not a member of the PCT. These include Taiwan, and several Latin American, Arab and South Asian countries. So, if you want to seek a patent there, it is necessary to file a national application there by the above deadline. We would be pleased to send you a list of the PCT countries upon request. If a PCT application is filed, the law of some European countries permits a patent to be obtained for their country only through the European Patent Office. Those countries are Belgium, Cyprus, France, Greece, Ireland, Italy, Monaco, Netherlands and Slovenia. If you want to file a patent application in Taiwan, it too must be filed before the upcoming first anniversary of filing the U.S. application. The PCT does NOT apply to Taiwan because Taiwan is not a member of the international treaties relating to intellectual property, although there is a bi-lateral treaty with the U.S. allowing filing within one year of your U.S. application.