Your initial patent application was filed several months ago, so you’re nearing the end of your priority period for internationalizing your application: 12 months maximum after initial filing. Here’s a quick and easy guide to internationalizing your patent application.
There are two distinct situations that affect the decision to extend your patent application internationally:
- You don’t yet know what your market will be, or which countries might be commercially interesting for your patent.
- You already have an idea of your market, and the countries in which you want to extend your patent application.
1. International extension through the PCT or international patent
If, during the first 12 months after filing your initial application, you have not yet defined your foreign markets, the PCT seems to be the best option.
The PCT, sometimes erroneously referred to as the “international patent”, is a treaty signed by 155 countries. It allows you to option all these territories at the same time for 18 months, a total of 30 months of reflection between the time you file your initial application and the crucial and costly choice of foreign countries.
This extra time enables you to identify your markets and potential foreign partners, and thus determine the countries in which you need to obtain a patent.
What’s more, the PCT makes it possible to centralize filing formalities, and thus to avoid the costs, particularly translation costs, in these countries right up to the start of the phase.
Please note that the term “international patent” is a misnomer: a patent is a national title, not an international one. The PCT actually refers to an international patent application.
- Read also: Is it possible to file a worldwide patent?
At the end of the 18-month PCT international phase, you will need to select the countries in which you wish to protect your innovation. As a reminder, in any country where your application has not been extended, any third party will be able to exploit your invention without paying you royalties, or signing a license agreement with you.
The choice of countries or “national phase entries” is an important moment when investments are consequent. You have to make sure you don’t overspend your IP budget unnecessarily. Especially as, once this deadline has passed, you will no longer be able to add other countries. Your IP consultancy can help you define the best strategy to keep costs under control.
A PCT international extension, without text modification, costs around €4,000 excluding VAT.
2. Direct international patent extension
On the other hand, if you have defined your foreign markets within the first 12 months after filing your initial application, direct international extension may be an option.
So, if you have customers in Europe, the United States or South Korea, and you produce in China, and you’re certain that there’s no need to protect your invention anywhere other than in those countries… It’s possible!
To do this, you need to file a patent application in each of these countries, and (except in the case of European filings) work through a foreign colleague on site. Please note that national patent offices require a full translation of the application text, which can be costly depending on its length.
Filing fees are also payable to these offices; for example, the European Patent Office applies fees from the 36th page and from the 15th claim. If the text of your patent application falls into this category, it may be worthwhile contacting your IP firm to rework the text and avoid these surcharges.
With this IP strategy, your market needs to be well defined, as expanding into additional countries once the 12-month deadline has passed is impossible.
For direct extensions, you’ll need to calculate between €3,000 and €7,000 ex-VAT for each country chosen, including the firm’s fees, the colleague’s disbursements, translation and taxes.
3. The hybrid solution for internationalizing a patent
Finally, it’s conceivable that, asthe 12-month deadline approaches, you may only have a degree of certainty about the countries of interest that correlate with your market.
For example, are you already working in Europe at the time of the international extension decision, but have potential contacts elsewhere that have not yet been confirmed? Then you can make a direct extension in Europe and a PCT international extension at the same time!
This strategy will enable you to have a European patent granted more quickly, since examination will begin earlier than if you go through the PCT. On the other hand, you still have the option ofextending your patent to other countries after 18 months, thanks to the PCT.
In short, there are many different international IP strategies, and it’s important to get the right advice to suit your needs and financial capacity. This quick guide will give you an initial overview of the possibilities for internationalizing your patent.
Contact a patent attorney, who will support you in your decisions throughout the patent procedure.
YesMyPatent, working with over 100 foreign patent attorneys, can provide you with a quote for the internationalization of your application.
Did you know?
Record number of patent applications filed in Europe in 2021.
