Provisional patent versus non-provisional patent. Applying in the U.S. only versus in other countries, too. Do it yourself versus hiring a patent attorney or patent services firm. As you can see, there’s a lot to consider before filing a patent.
That’s why you need to take a minute and develop a strategy because the route you decide to take could either cost you more money than you needed to spend or save you money.
Devising a Patent Filing Strategy
If you’ve done a preliminary patent search and are confident your idea is unique and will be granted a patent, it’s time to think about a plan of action. In developing your patent filing strategy, here are some questions to consider:
The Global Decision
Many inventors decide against marketing their product internationally over concerns of costs and a complex process. They are unsure how to file a patent in other countries, or are under the misperception that they have to conduct a patent search and file an extensive patent application in every country where they want to sell their product.
These inventors are probably unaware of the Patent Cooperation Treaty (PCT), available to individuals, small and medium-sized enterprises (SMEs), universities, research institutions, and major corporations who want international patent protection for their inventions.
As the United States Patent and Trademark Office (USPTO) states, the PCT allows a U.S. applicant to simultaneously file a patent application with the USPTO and have that single application recognized as a patent filing in the countries designated by the applicant.
According to the World Intellectual Property Organization, a self-funding agency of the United Nations that serves as a global forum for intellectual property services, policy information, and cooperation among nations, there are currently 148 countries accepting a USPTO patent application under the Patent Cooperation Treaty.
When you file a PCT application, you do so in one language, and you pay just one set of fees. This streamlined patent protection approach delays attorney fees and each country’s official fees until you can evaluate your invention’s response in the marketplace, conduct a market study, or plan the rollout of your product in that particular country.
In addition, the PCT application includes a search report, which saves you money if the references require you to adjust your filing strategy.
A Strategic Approach to the PCT Application
Depending on how quickly you want to protect your patent internationally, the PCT can save you costs and give you time flexibility. Here’s an example:
Your filing strategy is to obtain patent protection in 10 countries. You use the PCT application to delay costs. If you’re not sure at this time the countries where you want to file for a patent, you can select all the PCT countries on your application. You’ll have the option of modifying the list later.
So, you file a provisional patent application with the USPTO indicating your desire to file under the PCT. At this time, you only pay the filing costs for the U.S. provisional application.
Then, you have 12 months after the provisional patent filing date to save up the money to file for a U.S. non-provisional patent application. You have 18 months from your USPTO filing before your patent application is made public in the international countries under the PCT.
You then have 30 months from the U.S. provisional patent filing date to decide and pursue the granting of your patents in the countries indicated in your PCT application.
During those 30 months, you can evaluate the locations of competitors and their success, the availability of manufacturers in the countries you are considering, and the potential for copycats in a given country.
This period is also beneficial for working with your patent attorney or patent services firm to file in the PCT countries of your choosing and pay the applicable filing costs and other fees.
As you can see, a PCT application allows you to delay costs while your company determines the best strategy on how to file a patent globally.