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Where in the World Should You Register Your Patent?

Where in the World Should You Register Your Patent?

Ultimately, the decision of where to file a patent is not to be taken lightly. Even for a large multinational corporation, a truly worldwide patent filed in every possible country would be cost-prohibitive. However, filing in too few jurisdictions may result in a competitor operating free and clear to huge markets in other parts of the world. Ultimately, the decision is a business one.

By Robert Kalanda
07/21/12 5:00 AM PT

Patents can be one of the most lucrative pieces of intellectual property a company can own, particularly for any business in the technology sector. However, they are also one of the most costly and expensive forms of intellectual property available. For complicated patents, the application process can run upwards of US$10,000, filing fees can be upwards of $3,000 per country, and regular maintenance fees will cost hundreds of dollars a year over the life of the patent.

This mean not only that you should consider the value a patent will bring to your business, but also where to register it to be most effective and cost-efficient in protecting your rights nationally and internationally.

Following is a general overview of important considerations for any technology company. A patent agent or patent lawyer will be able to guide you through the complicated but lucrative process for your particular needs.

Where to File?

The most important jurisdictions for patent protection of an invention are the ones wherein it is manufactured and sold. For smaller companies, this will often be the same country. For larger companies, and companies that take advantage of foreign labor, filing patents in all those countries will need to be considered.

Manufacturing-heavy jurisdictions like China, Taiwan, Japan and India are important jurisdictions to hold a patent to ensure that competitors do not begin competing manufacturing businesses, creating competition when you would otherwise be granted a monopoly.

For technology-based businesses, casting a wider net of patent protections is preferable. Technology manufacturing can be readily copied overseas, and the universality and portability of technology-based inventions means there's an easily accessible global market for any would-be patent infringer.

Moreover, particular consideration should be given to your business partners. Modern technology often relies on the use of dozens -- if not hundreds -- of patents interplaying in a single device. Having a patent where both your partners and competitors reside will give your company the means to remain involved in the manufacturing process, while enabling tidy licensing fees to quickly accrue.

No 'International' Patent

Though larger companies will seek to obtain an "internationally" recognized patent, in actuality, all patent applications must be filed on a national basis. Attempting to coordinate, file, and respond to a wide variety of jurisdictions would be time-consuming and near-impossible if businesses had to treat each and every patent application as if it were from scratch.

Fortunately, the internationally recognized Patent Cooperation Treaty has attempted to streamline the process. In addition to giving each country a more-standardized application that will be applicable in all member countries, the Patent Cooperation Treaty also provides an inventor with an additional 30 months to determine which countries the patent will actually be filed with.

This additional time allows inventors to not only determine which jurisdictions will be most useful, considering their manufacturing and demographic needs, but also allows inventors substantially more time to raise the funds necessary to pay for the relatively expensive application process.

Minimize Cost, Maximize Protection

Whether an inventor proceeds under the Patent Cooperation Treaty or not, each country will still have the final say on whether the patent can be issued in that country. If an inventor is looking only for one or two countries -- say, Canada and the United States -- proceeding under the Patent Cooperation Treaty will likely be an unnecessary expense. Though the removal of the international application process does dramatically reduce the fees associated with a patent application, the costs can still be significant.

Ultimately, the decision of where to file a patent is not to be taken lightly. Even for a large multinational corporation, a truly worldwide patent filed in every possible country would be cost-prohibitive. However, filing in too few jurisdictions may result in a competitor operating free and clear to huge markets in other parts of the world.

Ultimately, the decision is a business one, as spending fees obtaining a patent where your product never sees the light of day can be as disadvantageous as not seeking a patent in that country at all.

For startup technology companies, the initial investment can often be seen as a daunting and cost- prohibitive expense. However, with careful consideration of your business needs, and assistance from a lawyer or patent attorney, the cost can be effectively minimized while maximizing the protection and profitability a multinational patent can provide. Having a patent lawyer or patent agent can greatly aid your company in obtaining the necessary intellectual property in a cost-effective manner.


Robert Kalanda is a member of the law firm Heydary Hayes.


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