Donald J. Ersler, S.C.

Foreign Filing Of A Patent Application

Many inventors ask if there is a world patent application. Unfortunately, there is not a world patent application. There is a Patent Cooperation Treaty (PCT) application, which allows an inventor to delay filing in most foreign countries for the payment of a fee. The PCT application may be filed through the United States Patent and Trademark Office. The PCT fee is based on the size of the application. The PCT application allows you to buy a delay in filing a foreign patent application up to 31 months from the filing date of the USPTO patent application. However, you still have the cost of filing in at least one foreign country.

There are three organizations where a single patent application may be filed for numerous countries. The three organizations include the European Patent Office (EPO), the Eurasian Patent Organization (EAPO) and the Gulf Arab States Cooperation Council (GCC). The EPO includes western and eastern European countries. The EAPO includes Russia and countries geographically located near Russia. The GCC includes Arab countries located in the Arabian Gulf. Out of the above three organizations, the EPO is the most popular for foreign filing. The cost of filing an EPO patent application is at least $10,000. Additionally, there are yearly maintenance fees while the EPO patent application is pending. There will be a separate patent application for each country in the organization and maintenance fees to be paid for each country’s patent application.

The inventor can also file a patent application in one or more foreign countries, such as Australia, Canada, Mexico or the United Kingdom. The Paris Convention allows a utility or design patent application filed in the USPTO to be later filed in a member country. The utility patent application must be filed in the Paris Convention member country within one year. The design patent application must be filed in the Paris Convention member country within six months.

To make foreign filing worthwhile, there must be a great probability of selling a large quantity of the invention in the particular country. The sales market that the United States provides is the best bang for the patent application buck.