Michael J. Foycik Jr., Esq.

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Foreign filing – it may be one of the biggest choices facing anyone with an invention or a pending patent application. What if your invention is so successful that foreign copying becomes a problem? Here are some things you should know.

First, the right to file in foreign countries – that is, foreign priority rights – can be valuable. And not just to you, but to anyone wanting to purchase/license those rights.

Second, foreign filing is expensive. It is so expensive, many companies have to target selected countries. It would be best to file for patent protection in countries where the product is doing well.

Third, there's a way to delay your foreign filing. A US utility patent application provides a one year grace period for PCT filing (Patent Cooperation Treaty filing) as well as in most countries.

Fourth, a PCT application provides typically 30 to 32 months additional time in which to designate individual countries. Thus, the PCT application is very useful even though by itself it cannot confer specific patent rights in specific countries.

Fifth, if your product is successful, yet not so successful that you can spend freely on foreign priority rights, there is room for optimism. Many corporations would be happy to invest in a successful product in order to acquire foreign rights. Specifically, such corporations would be willing to pay the foreign patent costs in exchange for foreign marketing rights. In those situations, you'd still likley get a portion of the proceeds from foreign sales, but without the aggravation. Or, you might even consider selling the foreign rights for a lump sum.

Sixth – when in doubt, consult a patent attorney with experience, and who has knowledge of foreign patent situations. Foreign countries are not all equal, and the rights conferred are not the same.

Nothing here is legal advice – for that you'd need to consult a patent attorney for your specific situation.

The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.