Maiorana Patent Law, PA

Patent Law - Established 1998

Can MAIORANAPC Help With Filing in Foreign Countries?

Yes, we can help with this.

The normal procedure is that we coordinate filing in other countries. We have a group of associates that we have been working with for years. By having multiple files with an associate, the associate has more at stake in doing a good job on the work. Specifically, they want to keep getting work from all of our clients, so they tend to put their best foot forward.

In general, “foreign filing” is the word that we use for filing outside of the U.S. In each of the jurisdictions that you choose, you will ultimately get to use the filing date of the U.S. application - if we follow all of the rules and procedures and time frames. In general, we have one year from the filing of the earliest U.S. application.

In general, foreign filing is a lot more expensive than the U.S. filing. We spend the time preparing the entire specification, claims, and drawings. The foreign associates merely translate this information into their native language. Some applications are quite long, so the translation costs would be higher. The EU is probably the most expensive jurisdiction to file in, with significant costs down the road when deciding which countries to ultimately finalize. Taiwan is generally the cheapest country to file in.

One intermediate solution is to file a PCT application. This needs to be filed at the 12 month deadline. A PCT is only a holding pattern application though. The costs would be roughly equal to one foreign country. A PCT application gives you the option to file in (most) individual countries (except Taiwan) by 30 months from the original U.S. filing date. A PCT application is essentially an option to delay filing internationally for 18 additional months. I usually advise clients to consider whether anything would truly change in that 18 month window. If things would be roughly the same, then you would be better off saving the expense of the PCT application and using that toward the filing in one of the individual countries. If things will realistically change in that time frame (additional revenue from the product, investors, etc.), then it may be worth the extra expense to file a PCT application.

  • Chris Maiorana
  • August 2016

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