Developing a patenting strategy to protect the commercial embodiments of an invention can be a challenge. The rights afforded by a single patent – to exclude others from making, using, selling, importing or distributing an invention without permission do not extend beyond the borders of the country issuing the patent. As a result, deciding where to patent an invention is very important along with understanding the processes available to secure appropriate protection and how they may align with your commercial activities and future goals.
Filing for a patent in a single country may be sufficient if your commercial interest lies solely in that country. Furthermore, if by carving out the most important market you remove the incentive for others to commercialize in other smaller markets, you could effectively gain exclusivity in those smaller markets without incurring further patenting costs. These scenarios are rare, unfortunately.
More commonly, patents are filed in a number of countries to provide more global protection which may be important to attract a licensing partner. In practice, you must consider filing for a patent in every country where you anticipate selling, exporting or licensing the product or services that are protected by the patent. One approach could be to file directly in all countries; however, the drawbacks include the huge upfront costs that would be incurred and the need to tailor the application for the formal and statutory requirements of each country.
The more common approach is to file an “international” application through the Patent Cooperation Treaty. While there is no such thing as a worldwide patent, the PCT standardizes and streamlines the application process for the multitude of countries who are signatories to the treaty (almost 150 at time of writing, including all of the major industrialised countries). Filing through the PCT can save both time and money when protection in more than one country is sought. Although it still requires a significant financial investment, many of the associated costs can be deferred to a later stage, or avoided altogether, once there is better understanding of the business direction.
We understand the process of filing patents and securing protection around the world. Contact our office if you would like to discuss this subject further.