Foreign Filing Strategy
Foreign Filing Strategy – by Jon Lindsay, MLO Partner – April 21, 2025
Patent protection is a key part of a business strategy, but patent rights are territorial—there is no worldwide patent. Therefore, deciding where to file patent applications is critical.
Where to File?
Consider the following factors when choosing countries or regions:
Markets with significant growth potential for your product/service;
Preferred manufacturing or service-hosting locations;
Regions active with major competitors;
Overall patent procurement and maintenance costs.
Cost considerations will often help narrow your choices to the most strategic options.
Where Can We File?
Filing individually in multiple countries can be expensive and complex. To streamline costs and effort, regional patent offices provide alternatives:
European Patent Office (EPO): Covers most European countries. One EPO application can be validated individually or through the new Unitary Patent (UP), which provides coverage across participating countries (excluding the UK).
African Regional Offices (ARIPO and OAPI): Cover most African countries.
Eurasian Patent Convention (EA): Covers eight countries including Russia.
Gulf Cooperation Council (GCC): Covers six Gulf countries including Saudi Arabia.
Patent Cooperation Treaty (PCT): The PCT has 158 member countries (excluding Taiwan). A PCT application doesn't directly grant a patent but provides a streamlined, cost-effective process with a single filing, search, and initial examination. By delaying decisions on specific countries, the PCT can save time and money, especially when pursuing multiple markets. Favorable initial PCT examinations may also qualify for accelerated prosecution through the Patent Prosecution Highway (PPH).
For example, if protection is desired in the US, UK, France, Germany, China, Japan, and Taiwan, one strategy could be (common with some of MLO’s clients):
File initially in the US;
Within a year, file a PCT application and separately in Taiwan (not a PCT member);
After PCT processing, file applications in Europe, China, and Japan;
Grant via EPO to Unitary Patent (UP) plus the UK.
Costs
Initial filings typically have the highest costs due to application drafting and translations. Prosecution costs rise with each region’s examinations. The PCT or regional patent offices can reduce and delay these expenses. Generally, expect $4,000-$12,000 for the initial filings and at least $1,000 per application per country after the initial filing for prosecution and maintenance. Each country/regional patent costs approximately $15,000 to $50,000 from filing to issuance.
Once your target countries are identified, a patent law firm can offer precise cost estimates and recommend optimal filing strategies. Be sure to request price transparency/estimates at every stage of the process.
What Next?
Careful planning and strategic consideration of your business goals, market presence, competitor activity, and costs are essential for an effective patent protection strategy. Leveraging regional patent offices and the PCT process can significantly streamline the international filing process, control expenses, and strengthen your overall patent strategy.
Consulting with an experienced patent firm early in the process will ensure optimal decision-making and resource allocation. Reach out to us for a free consultation.