How Do I File My Application Internationally?

With respect to foreign filing options, you either can file directly in the countries you want to pursue protection in by the one year mark or file a U.S. Patent Application, or you can use the Patent Cooperation Treaty (PCT) to file an application with the World Intellectual Property Organization (WIPO) that will extend your need to file national applications in each country to between thirty to thirty-one months from your U.S. filing date.

If you want to defer expenses of national stage filings (filing directly in other countries) as long as possible, we recommend using the PCT process first. Our firm charges a one-time fee to prepare, file, and handle all correspondence for a PCT application plus the government filing fees. The government filing fees depend on the final page count of the application (WIPO charges for every page over thirty pages). There are discounts in fees for being a micro or small entity. As an example, a small entity would pay $2321 plus $15 for every page over thirty in government filing fees to file a PCT application. 

The only risk in using the PCT process is that not all countries are parties to the treaty. Taiwan, for example, is not a party to the PCT, so you have to file by the one year mark in Taiwan if you wish to see protection there. Most major economies and countries of the world are parties to the PCT, however, so this risk is low unless you want to seek protection in various countries in Africa or in Asia.

At the thirty to thirty-one month mark, we would need to decide which countries we want to enter the national stage in by filing a national application with the respective country’s patent office, claiming priority back to your PCT application and back to our provisional application filing date (if you filed a provisional patent application). The cost to file in each country varies quite a bit depending on whether they require the translation of the application into a foreign language. We charge a fee to file in each country. In some countries, like the UK, they require no translation, and the foreign associate fees can be around $2500 or so. For other countries like China, translation costs and government fees can make the filing cost $5500 or more depending on the size of the application. For Europe, there is a unitary patent application we can file that covers some countries that are part of the EU which typically runs about $7500–$8500 to file.

Following filing in each country, patent prosecution like that described in the US will take place at different rates of speed. European patent applications typically take about five years to issue, though in other countries it can be longer or shorter (the UK is much faster than most countries). You will need to pay foreign associates to handle any Office Actions that issue. Typically, foreign prosecution is comparable in cost or somewhat more expensive than corresponding US prosecution.

At this time, in most countries of the world, you will need to pay yearly annuity fees to keep the patent application pending while it is in the examination process. These annuity fees typically run in the hundreds of dollars per country each year. After issuance of the patent in each country, you will need to continue to pay these annual fees to keep the patent in force for the entire twenty-year period. Toward the end of this period, the annual fees can run in the low $1000s each year per country.

Foreign patenting is expensive, as a rule of thumb is that you can expect on the average to pay around what it cost to file in the US when you file in each foreign jurisdiction. Foreign patents cost more to maintain, so it will be a business decision whether to file. However, at any time you can decide not to pay the annuity fees and let an application go abandoned.

If you would like to file internationally, we recommend filing a PCT application, reserving until later the decision where and whether to file internationally.