Intellectual property (IP)—patents and trademarks at the core—are largely creatures of national law, though there are international treaties that apply.
How much does it cost to obtain and maintain worldwide patent protection for a single invention? It’s almost incalculable! Even the World Intellectual Property Organization (WIPO) declines to venture an estimate, though it does break down the investment into four parts: Government filing fees, attorney fees, translation costs, and annuities. See How Much do Patents Cost? (WIPO).
Group 1: U.S. stands alone at the top
In which countries should you protect your company’s intellectual property (IP)? For patents and trademarks, especially if your company is American, you’ll probably pick the U.S. (USPTO) first. The U.S. is the world’s largest economy, and it has sophisticated patent and legal systems for obtaining and enforcing IP rights (or IPRs as they’re called in many countries).
How and when to go international
If your company and your inventors are based in another country, you might choose to file first in that country, with a view toward a future filing in the U.S. In any case, you’ll want to consider filing internationally.
International patent applications can be filed through the Patent Cooperation Treaty (PCT) after first taking advantage of the Paris Convention. Generally, the first filing starts the 12 month clock on the Paris Convention. A timely PCT filing can buy another 18 months before entering the “national phase.” At every step along the way, a cost-benefit analysis may be required to avoid losing valuable rights while also avoid over-investing in rights in technologies that might never provide adequate return on investment (ROI).
The conventions, procedures and timing are challenging. For best results, confer with counsel before you launch your new or improved product.
Many companies are challenged, operationally and financially, just to protect their IP in the U.S.
Group 2: EPO, Japan, China, Korea, Canada
If international markets are important to you, your next choices might include the other four members of the IP5: European Patent Office (EPO), Japan (JPO), China (SIPO) and Korea (KIPO). Canada (CIPO) is another logical choice.
Your Group 3 might include Turkey
When you look at the top economies of the world, you’ll see that many of the IP5 offices are represented, including many of the EU countries. After allowing for those countries, Turkey is the next country on the list that does not require an additional examination. (EPO examination is accepted in Turkey.) In view of its economic importance, it might be an easy decision to validate a European patent in Turkey.
7 tips for selecting countries
These seven (7) questions will help you decide on countries in which to file for IP (patent, trademark) protection:
- Is the country likely to provide revenues or customers for your company?
- Do you have business operations—offices, distributors, partnerships or manufacturers—in the country?
- Is your company’s market growing in the country or the region?
- Does the country have key markets for related platforms (such as apps for smartphones)?
- Do you expect to expand into the country?
- Will your products—or those of your competitors—be shipped through the country, by land, air or sea?
- Do you want the power to stop counterfeits the country?
If you answer yes to one or more of these questions, think twice before passing on IP protection in the country of interest.