Mistake #7: Ignoring International Markets

April 7, 2020 | Written By Elana Bertram

Elana Bertram, Parlatore Law Group LLP, Ignoring International Markets

This is the seventh and final post in a seven-part-series detailing the biggest entrepreneurial mistakes business owners make. The series will run over the next few weeks so check back to learn more.​ To read the previous post in this series click here

Venturing into patent protection overseas is expensive.  Even established companies may balk at the costs because each patent office has its own rules and fees, some far higher than in the US.  However, if your product is going to be sold overseas, you need patent protection overseas.  As mentioned above, each country or region has its own rules and deadlines for patent applications.  Europe is unified at the early stages, but you still must pay each country individual filing fees after your patent is granted there, then yearly fees thereafter to continue protection.  Don’t be caught by surprise when you are asked to pay “annuities” on your pending applications, even when they haven’t been touched by a foreign Examiner yet.  In some Asian countries, your application can sit for years without being examined, but if you miss an annuity payment, your application is considered abandoned permanently.  (The US system is somewhat more forgiving.)

This is a tricky venture.  Your US patent attorneys will delegate much of the work to local counsel, potentially doubling the cost of each Office Action.  There will be substantial expenditures for translation not only of your own applications but also when foreign-language prior art is cited against you.  Even more intimidating, you have a duty to report foreign Office Actions to the USPTO if your US application is pending at that time, which can impact the cost and duration of the examination of the US application. 

Despite the substantial costs, international patent protection can make or break your market share.  Some products are naturally limited by the varied patent rules.  For example, one cannot get a patent on a genetically modified cell in India.  Some products, however, will have their widest use in countries other than the US, such as drought solutions or portable sanitation devices.  Entertainment media and devices are hot in Asia, and you need to tread carefully when you seek to manufacture products there.  I would never advise a client to pitch an idea to a manufacturer overseas without already having a pending application in that country.  Additionally, other options may be available to protect your ideas in other countries.  For example, some countries like Germany and China offer a middle level of protection called “utility model” patents, which for a lower cost and a lower level of examination, you get a lower level of protection for some consumer products. 

This is an area where even your patent attorney might need to consult a textbook, but it’s a discussion worth having.  It may take longer than you think to realize your big dreams of becoming a global mogul.  On the other hand, your product might be wildly attractive in markets other than the country you call home.  Don’t ignore international patent protection because the clock is ticking – you cannot file later if you change your mind. 

 

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