Where should US-based startups file their patent applications?

Imagine you have developed a groundbreaking product that is going to revolutionize your industry. You do not want your competitors to copy the product. At the very least, you want them to pay you compensation for making a competing product.

You know that if you want to protect the product, you should file a patent application. So, you hire a patent lawyer and file a U.S. patent application. Problem solved, right? Time to start manufacturing and marketing your product.

But wait, a patent is a national right. A U.S. patent would only stop the manufacture, sale, use or importation of competing products into the U.S. Competitors from other countries will still be able to manufacture and sell competing products outside the U.S.

What can you do to stop competition in other countries? Well, you can file a patent application in each of those countries. However, the cost of filing a patent application in every country can be prohibitive even for the largest companies. Further, your product may not be limited to one invention and may encompass several inventions.

Each of these inventions may need its own patent application, which can quickly multiply the cost to your business and make filing for patent protection prohibitively expensive. Further, differences in the law in some countries can result in you spending significant money for little gain. This does not mean you should give up on patent protection in other countries, but you will want to be judicious in deciding where to foreign file.

When selecting a country to foreign file, a business should consider how likely a competitor is to sell a competing product in that country.

This article describes several criteria for helping decide in which countries to seek patent protection. It is important to analyze these criteria and decide whether foreign filing is appropriate before publicly disclosing the invention, as many countries do not allow you to obtain patent protection after the invention has been publicly disclosed.

Where to pursue foreign patent protection

There are several reasons to file for foreign patent protection, including stopping competitors, marketing benefits, manufacturing protection, licensing and inventor location. Foreign filing can be prohibitively expensive, and you should engage in a thorough analysis when devising your filing strategy.

You will want to analyze each of the reasons to foreign file. You should consider whether it makes business sense to file in several countries, in a more tailored list of countries or in a particular country. We will describe the different considerations when preparing a foreign filing program and conclude with examples of how foreign patent protection may be pursued for two different products: a communications chip and a cell phone.

Stop competitors

The primary reason to foreign file is perhaps the most obvious — to prevent competitors from making, using, selling or importing a competing product that encompasses the invention.