A U.S. Patent may be enforced against parties that make, use, offer to sell, or sell a patented invention in, or imports such a patented invention into the United States or its territories. Individuals seeking patent rights enforceable for actions outside of the United States may do so by obtaining patents from government offices in countries or jurisdictions where patent rights are desired.
A party filing a patent application in the United States Patent and Trademark Office (USPTO) may pursue a corresponding patent application in other countries by acting within one year of the date of filing of the patent application in the United States. While foreign patent rights may be advantageous to companies competing in global markets for products and services, these companies should weigh costs associated with obtaining and maintaining foreign patent rights against any benefits of such patent rights.
Costs associated with obtaining and maintaining a foreign patent consist of costs of an initial filing of a patent application, prosecution of the application to grant and payment of annuities to a government to maintain the foreign patent in force. While the substance of the specification and drawings of a U.S. patent application may be reused in an initial filing of a corresponding foreign patent application, the patent applicant typically pays fees to foreign counsel for services to finalize documents for filing. For example, foreign counsel will often need to reformat claims, drawings and description to conform with local requirements, and attend to additional formalities. A translation may also be required. In addition to paying foreign counsel to reformat and translate specification and drawings of the U.S. patent application, an applicant seeking foreign patent rights will pay government filing fees.
After an initial filing of a foreign patent application claiming priority to a U.S. patent application, a foreign patent office will issue Office Actions to identify issues to be resolved before a foreign patent may be granted. Costs associated with preparation and filing of a response to such an Office Action typically include translation of all or a portion of the Office Action, analysis by foreign counsel, further analysis by US Patent counsel and preparation of instructions to foreign counsel for filing the response and preparation and filing of the Office Action by foreign counsel.
Following responses to one or more Office Actions, a foreign patent Office may issue a notice of allowance/grant indicating that the legal requirements obtaining a foreign patent have been met. The applicant will then typically need to pay a Grant Fee to have the patent granted. Additional payments of an annual annuity may also be required to keep the patent in force.
Cost of obtaining and maintaining a single foreign patent asset in a foreign country may often exceed the cost of obtaining and maintaining a corresponding U.S. patent asset. In weighing this cost, one may also consider the benefits of the foreign patent rights including access to courts and/or other patent enforcement mechanisms as well as availability of remedies.
If you are considering whether patent rights in any particular foreign country is appropriate for your business, Berkeley Law and Technology Group would be happy to assist you with assessing the associated costs and benefits. You can reach Paul Nagy at 503-439-6500 or pnagy@bltg-ip.com.