Cost of a Worldwide Patent: Everything You Need to Know
The cost of a worldwide patent on an invention can cost millions for issuance and filing for almost all of the 200 countries.10 min read
The cost of a worldwide patent on an invention can cost millions. Getting a patent in almost all of the 200 countries could potentially cost about $1,000,000 for issuance and filing. In addition, it could cost another $1,000,000 to uphold the patent for its entire term.
The best way to manage your expenses is by using a Patent Cooperation Treaty (PCT) application. It makes it possible for you to file just one patent application internationally. That one application is accepted by up to 150 countries around the world. Also, a PCT application lets you postpone for up to two and a half years in making a decision about which countries in which you should file.
After you have filed your PCT application, it is translated into individual patent applications for each country where you are seeking patent protection. If you have a completed patent application, filing a PCT application could cost roughly $4,000.
The first place to start when considering worldwide patents is by applying for a domestic patent. A patent gives the holder an exclusive right to an invention for a set period of time. After filing for a U.S. patent, there is a limited window of time in which to apply for international patent protection.
While a start-up may only be operating in the U.S. for now, with success it may want to expand abroad. If that is a possibility, then the company needs to act immediately to capitalize on international patent protection. Once the allotted time to apply for international patent protection expires, that company could be prevented from getting a patent for its own invention.
Strategy for Patent Application
Filing only where there are products being made that would be considered competitive with yours is a good strategy to keep expenses down.
For example, if products that compete with yours are made in China only but sold worldwide, just one patent in China would protect you around the world. But defending a patent in contradiction of sellers in the U.S. is easier than defending one in China, so having a U.S. patent, too, is prudent. You can apply this concept to as many countries as you can afford.
International Patents Enforcement
Applying for an international patent is easy using the PCT, enforcing them is still complicated, and of course, expensive.
The realities of enforcement should be considered when it comes to cost management and considering whether or not undertaking patent costs in a particular country is acceptable. The U.S. is the easiest country to take action. China remains difficult but enforcement is much easier now than it was in the past.
Enforcing a patent in Brazil, Russia, India, and South Africa is still quite difficult. These are countries where you might reconsider shelling out all the money it requires to obtain a patent. Your money might be better spent elsewhere.
Background on Patents
A patent has numerous important elements, including a disclosure that discusses the invention in detail and includes drawings, lists of prior art, and claims, which discuss what the patent protects.
The only way you truly know if a patent is valid is to have it tested in a lawsuit and in a subsequent appeal. If the patent survives the litigation process then you really know that it's valid.
How to Obtain Worldwide Patent Protection
How do you get worldwide protection for your invention? If you're an American, it all starts in the US. The key date is the U.S. filing date for your patent application. Once you file the U.S. patent application, there is up to a year, under international treaties, to seek international protection which is under two key treaties.
One is the Paris Convention, which is over 100 years old. You can file in the U.S. and within one year, file in most other countries of the world in their patent offices and claim the benefit of the priority of the U.S. filing date.
The other treaty that is very important for you is the Patent Cooperation Treaty, or PCT, described above. A PCT application buys you an additional 18 months, or two and a half years, from the date that you filed the U.S. patent application until you actually have to go into any other country or jurisdiction.
There are five leading jurisdictions in the world for patents. One is the U.S. Patent and Trademark Office, or USPTO, one is the European Patent Office, or EPO. Another is the Japan Patent Office.
The fourth and fifth jurisdictions are China and Korea, which are very important jurisdictions for patents. Between the five jurisdictions, China and Korea are where the 90 percent of the patent applications in the world are filed.
Obtaining Patent Rights Around the World
Patents are granted by each country individually, not by any comprehensive international think tank.
A single international patent-granting process is impossible because different countries have different patent laws. However, the European Union will soon be granting a Europe-wide patent. Even then, obtaining a patent around the world will require consultation with more than one jurisdiction, all of whom will need to approve the application and grant the patent.
The patent protection you receive varies from country to country based on whether the country issuing the patent has an efficient enforcement program in place. It also varies depending upon whether or not a certain country will even grant a patent on the proposed invention.
When you are seeking international patents, it is smart to draft an application so that it would be appropriate in the U.S. and China, since the U.S. and China construe their applications using some of the most strict disclosure requirements.
Coordination of international prosecution can be taken care of by your patent attorney, but they cannot represent you in countries that do not allow them to practice. It is required that you have separate representation in all countries that you want to get a patent.
Where Should I Pursue Patent Rights?
It is very important to file a patent application as early as possible. If you would like a patent, you need to file an application before disclosing or using the invention. India may also seem to be of interest for international patent application given the size of the market.
Maintaining and Estimating Patents Around the Globe
Living in the competitive world we have today, companies must constantly be more and more innovative in order to keep that competitive edge, while handling budgets that are shrinking for research and development and staying abreast of the constantly changing expenses related to getting international patent protection.
Estimating expenses can be time-consuming and challenging. Expenses usually have three different segments – an official segment, an associate or attorney segment, and a translation segment - which are disseminated across the various stages of the patent application process. The entire estimated expenses to maintain and file an application or approved patent through to expiration range from $25,668 in Japan to $11,404 in Israel. Costs for translations is tremendously high and range from $6,444 in Japan to $1,565 in Iran.
The estimated costs to request inspection in additional jurisdictions differ from $2,254 in Europe to $496 in India and are comprehensive of the expenses for additional claims in South Korea and Japan and the expenses for extra independent claims in Russia. If it's assumed the PCT application is fairly straightforward, the prosecution varies from $5,068 in Japan to $533 in Iran. The projected expenses to be paid in time of patent grant/ allowance /issuance vary from $3,596 in EP to $143 in China.
Other countries make it very difficult to patent business methods or software. For these jurisdictions, you may need to draft your claims specifically to overcome these obstacles. Also, some countries charge additional fees for each claim included in an application above a certain number. If you can manage to limit the number of claims that you have, you can prevent incurring these types of fees.
Depending on how much patent work you have, it could be less expensive to hire an in-house patent attorney, rather than retain outside counsel. Outsourcing other services in your patent portfolio can be an easy way to trim your legal fees. Many steps of the foreign filing process are primarily administrative. A company can easily outsource those jobs to reduce their patent expenses.
International Patent Costs
There isn't anything such as a world patent or international patent. This is because no one patent filing will protect the invention idea you have in each country in the world. To obtain patent protection in a certain country, you need to file for a patent in that country specifically.
If you wanted to get a single patent in the almost 200 countries in the world, it would cost somewhere around $1,00,000 for issuance and filing. It would cost another $1,000,000 to just to maintain the patent, which is much too high for the majority of independent investors and even corporations. This is especially true when you consider that you need to apply for patents before the product has even become successful.
In the starting stages, going through the patent process lets you keep costs down to an affordable level and hedge your bet. The easiest tool to manage expenses is known as a PCT application, which stands for Patent Cooperation Treaty.
What Does a PCT Application Do?
Similar to the Common App that colleges use, the PCT application lets you file a single international patent application that over 150 countries around the world will accept. The PCT application may be used to reserve your patent application to certain countries. You can also delay for a maximum of two and a half years when it comes to deciding which countries you want to file in. After the period has passed where you send in your PCT application, this gets converted into single patent applications, which are for each country where you want patent protection.
If your patent application is already complete with claims, it will cost around $4000 to file a PCT application. This lets you keep your right to file international applications in 150 different countries (excluding Taiwan) for several years.
While there are other details of the application to research, such as timing and filing requirements, it's worth considering the PCT application if you want an international patent. Usually, companies will file patents in several main countries where the invention will be created and sold. For example, in the 1990s, it cost WorkTools Inc over $100,000 to have three patents for their PowerShot staple gun in France, Brazil, China, the USA, England, Canada, Germany, Italy, and Spain. These countries were chosen due to competitors making products that were similar there.
Disadvantages of PCT
It's easy to apply for international patents with PCT, but it's expensive and complicated to enforce them. When you're deciding if the expense of a patent is worth it or not in a certain country, you should consider the realities of enforcement as well. In Western Europe, Korea, the United States, Japan, and Canada, patent enforcement is effective. Again, the United States is the easiest place to take action on your patent. China can be difficult but has gotten better over the years. It continues to be very difficult to enforce a patent in Brazil, India, South Africa, and Russia.
How Do You Lower Down Patent Cost?
An easy way to save money is to file your patent in countries where other competitive products are created. For example, if you found that China was the only country that had competitive products being made and then subsequently sold worldwide, your one patent in China will protect you. However, the United States makes it less complex to defend a patent against potential sellers, so it would make sense to get a US patent as well. This idea can be applied to many countries.
A way to decide where you want to patent is to figure out if the royalties on the sale of your invention will cover the expenses of maintenance and filing.
Defining Your Idea and Understanding Patents
Patents can be applied for only in the name of the specific inventor or inventors. You can apply individually for a patent or as a part of a joint research group.
There are three key kinds of patents:
These have been established for various kinds of inventions. You can protect a utility patent for a machine, process, article of manufacture, an advance upon any of these existing products, or composition of matter (such as a drug). You may apply for a different kind of patent, but you may also patent an ornamental design of an asexually reproduced plant variety or an article of manufacture.
Your creation must offer some usefulness to society, must not be unpleasant to public values of morality, and must be original, appropriately enabled or described, non-obvious, and the inventor must claim it in obvious and certain terms. There are numerous products or ideas of human work that is not able to be patented; however, several can be protected through additional channels such as a copyright.
You are not able to patent the following: physical phenomena, laws of nature, abstract ideas, and musical, dramatic, literary, and artistic works (a copyright is needed for the these.) A utility patent should be applied for a product that has a precise value to society. A utility patent protects a product for 20 years, which starts from the day the patent is approved.
You can fill out an application for a design patent when you have an invention pertaining to a new and improved design on an already standing process or product which does not disturb the functionality of the novel product. A design patent lasts for 14 years, which starts from the date of the original patent application. A plant patent is appropriate if you create a novel asexually-reproductive type of plant. A patent on a plant is protected for 20 years from the initial patent application date.
What Is a Way to Know if a Patent is Valid?
The legal system knows that patent offices can make mistakes sometimes. The only way to know if a patent is really valid or not is to have it tested through a lawsuit and then the subsequent appeal. If your patent gets through the litigation process, you'll then know that it's truly valid. Patents are assumed to be valid and most won't go through legal battles that are expensive unless they're regarding something that's worth a lot.
For example, the Wright Brothers spent years defending their patents that covered many important details related to airplanes. This was essential for them to do due to how much they contributed to that field.
Searching for a Patent
Contact the closest Patent and Trademark Resource Center (PTRC) and contact experts on patent searching. This is a complex process because it necessitates that you perform numerous searches for keywords in databases that store all patents that date back to 1790. Solicit help from a patent agent or attorney that is registered in order to help you perform your search.
If you need help with managing the costs of a worldwide patent, or help completing and filing a patent application, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top five percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and have an average of 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.