Business Considerations for Foreign Filings
After filing a U.S. patent application, you have one year to file any foreign applications claiming priority to it. (But see Note, below.) For large, well-established companies, the decision of where to file is often easy—long-standing company policy dictates it.
But for solo inventors, startups, or budget-conscious businesses, the decision of whether (and where) to file abroad is often accompanied by some hand-wringing. Drafting and filing a U.S. application is already costly; pursuing protection abroad—with added filing, legal, and maintenance fees—can be staggering and, for some, out of reach.
This post outlines key factors to consider—and hard facts to accept—before taking your patent international.
First, The facts
You're likely excited about your invention and eager to protect it globally. That’s understandable—but business reality demands a more strategic approach. Before committing to foreign protection, consider these facts:
Fact #1: There’s no such thing as an “international patent.” An international patent application (via the Patent Cooperation Treaty (PCT)) exists, but it’s largely a (costly) tool to delay even costlier national filings.
Fact #2: Foreign patent protection is shockingly expensive. Even well-funded companies rarely file in every country.
Fact #3: Maintaining and enforcing a patent is more expensive than obtaining one. Some markets may not be worth the long-term investment.
Accept these facts, and you’re ready to make a smarter, more focused decision.
Put simply: you can’t protect your invention everywhere.
A Rule of Thumb
Some attorneys reduce the foreign filing question to: “Do you want to file abroad?” More experienced counsel apply a practical framework. I was taught this:
File where you sell. File where you manufacture. File where your competitors manufacture.
Here’s why:
File where you sell. You want the ability to block infringing products in your markets. If your sales will be U.S.-only, foreign filings may not be worthwhile.
File where you manufacture. A patent in your manufacturing country can stop infringement at the source. In some countries, it’s not uncommon for manufacturers to sell both to you and, quietly, to others. A patent local to your country of manufacture discourages such behavior and can deter competitors from making your product in their own facilities.
File where your competitors manufacture. Most products sold globally aren’t made where they’re sold. One country’s factories often supply multiple markets. Filing in these locations gives you more leverage to stop infringing products at the source—potentially blocking distribution into many markets.
This framework is a helpful starting point—but it’s not enough. A good attorney should ask deeper questions.
Begin With Your Business Goal
As I’ve written elsewhere, every patent decision should flow from your business goals. The high costs of foreign filing make this especially true. Issues specific to your business may even override a strategy developed by simply following the above rule of thumb. Your patent counsel should help you get to the right answer.
A thoughtful attorney will begin with questions like:
Will you launch internationally within the next year or two?
You may want to file in that country, even if you aren’t immediately ready to enter the market.Are you planning to develop a second- or third-generation product for foreign markets?
You might wait to file on the later-generation product (if it’s independently patentable), file on just the first generation (if it will cover future generations), or pursue a mix of filings based on your circumstances.Where will you scale manufacturing?
If you intend to manufacture abroad once sales grow, consider filing in that jurisdiction sooner rather than later.Do some countries specialize in manufacturing or technologies relevant to your product?
China was long considered the go-to market for manufacturing, but other countries are quickly building capability. If your product could be manufactured elsewhere, it may be wise to file there too.Are there regulatory barriers in certain countries that could delay a launch?
If so, it might be prudent to delay foreign patent expenses by first filing a PCT application.Will standards or code requirements force product changes in specific markets?
If you can’t sell the product in its current form into a given market, then no one else can—so it might be reasonable to skip filing in that country. File a new application abroad once you develop that market-specific product.
Your answers may shape your filing strategy.
Unsure how business-specific factors could influence your foreign filing decisions? Reach out—I’m happy to walk you through it.
Final Thought
You’ve got one year to make your foreign filing decisions. Use that time wisely: revisit your business plan, evaluate your goals, and weigh your options. Rules of thumb are useful—but ignoring business-specific factors is risky.
Action Step
Before deciding on foreign filing, speak to your patent counsel. Ask what questions they use to guide foreign filing decisions. If their response stops at “Where do you want to sell the product?”... you might want to keep looking for more well-considered advice.
Note: For design patents you have even less time—only 6 months.
