Michael J. Foycik Jr., Esq.

Your startup company has a valuable invention, and you're considering filing a US Patent Application.  But, you're wondering whether or not to file an International Patent Application.  The answer to that depends on various factors, as follows.

Worried about foreign competitors sending infringing products into US market?  Your US patent application can stop them at the border if your file a complaint with the US Customs Service and meet the requirements.  So, if your market is strictly the US market, then you might not need an international patent application.  That might include a PCT application or an EU application.

Expecting a big success, or have investors expecting a big success?  Then you might just need an international patent application.  That's because you may be exporting goods into other countries, and would want patent protection in those countries. 

When going after international patent protection, there are several ways to go.  There is a PCT (Patent Cooperation Treaty) filing, which gives a kind of patent pending status in any designated foreign countries for roughly 30 to 32 months.  This will require a national stage patent filing in the designated countries during that pendency. 

Then there is an EU (European Union) patent filing, currently similar to the PCT filing.  The EU application is changing for the better in the coming year, by including all EU member countries for a single filing.  That is expected to represent a great cost savings.  Previously, I might not have recommended an EU filing in all cases, but I expect to highly recommend the new EU filing once it is available. 

Finally, there is the direct foreign filing, by individual countries.  This may be very cost effective compared to a PCT filing for a small number of countries. 

There's more to international patent filings.  For example, there's cost.  And, there is an issue of patent value and enforceability in specific countries.  Not to mention the ease or difficulty of obtaining an issued patent in any specific country.  I hope to provide detailed articles on these aspects in future articles.