Absolutely. Not only are you prohibited in many or even most countries from filing your own application, but you couldn’t possibly do a good job of it. Patent laws differ from country to country, and claims and strategies that work well in the U.S. are often completely unacceptable in foreign prosecution. This is especially true in the fields of medicine, computers, and business methods. A good law firm will have associates in all the different countries.
The World Intellectual Property Organization (WIPO, https://www.wipo.int/portal/en/index.html) has guides to patent treaties and the laws in its member countries, but it is extremely difficult to wade through the laws to decipher what they mean. A good summary of what you can do in certain countries can be found in the Green Fields Patenting book.
The World Intellectual Property Organization (WIPO) has guides to patent treaties and the laws in its member countries, but it is extremely difficult to wade through the laws to decipher what they mean. The best summary is found in Strategic Patenting. Among the many differences:
| US | Foreign Countries |
| – one year filing window, applications can be filed within one year of publication or other public disclosure or use | – absolute novelty, public disclosure of use without prior filling of a patent application will destroy all patent rights |
| – claims to treatment of humans, broad software and method of doing business | – many forbid or severely narrow claims in these areas |
| – many independent claims | – limited no. of independent claims |
| – scope of claims is not limited by examples | – scope of claims is often limited by examples |
Foreign filing is expensive, especially when filing in foreign countries that need translation, e.g., China, Japan, Korea, Brazil. The cost of translation, filing, request for examination, and foreign associate fees for a normal size application is at least $6,000. For long applications, this can easily rise to over $10,000. Western European countries can be filed in a group application through the EPO (European patent office). That can be done in English, but the costs are still likely to be $7,000 – $8,000 for filing, request for examination, and foreign associate fees. And here again those costs will go way up for long applications. Another consideration is that many patent attorneys write lots and lots of claims. That’s usually a terrible idea for foreign filing, because that adds tremendously to the cost, and because reducing the number of claims requires more work on the part of the patent attorney.
Foreign prosecution usually takes at least three to five years from filing to grant. The process is even longer in practice because patent applicants usually delay their foreign filings until about a year after filing their U.S. utility application (without PCT) and about two years after filing their U.S. utility application (with PCT). Additional delays can occur when the applicant fails to request examination when filing the foreign application.
As in the U.S., there are ways of speeding up prosecution. The EPO, for example, will generally accelerate examination upon request, without any justification and even without paying any additional fees. Some countries also tend to follow the lead of other countries, granting patents in their countries when they learn of similar grants in the U.S. or EPO.
Filing patent applications in western Europe, Africa, and Gulf countries is often more effectively accomplished through regional filing offices than through individual country patent offices. The five regional patent offices are listed below. By far the most-often used regional filing is through the European Patent Organization (EPO).
- African Intellectual Property Organization (OAPI)
- African Regional Intellectual Property Organization (ARIPO)
- Eurasian Patent Organization (EAPO)
- European Patent Organization (EPO)
- Patent Office of the Cooperation Council for the Arab States of the Gulf (GCC Patent office)
The threshold issue is cost. One must assume that it will cost at least $15,000 to obtain a patent in each foreign country, and then at least another $350 – $750 per year to maintain the patent. On top of that, applicants should understand that patents are not self-enforcing. It can easily cost a million dollars to enforce a patent, and that is for each country in which suit is brought. Thus, unless it makes economic sense to prosecute a patent application to issuance, and then to enforce it, there is little percentage in filing foreign patent applications. Where applicants do file foreign patent applications, they generally file in EPO, Japan, China, Canada, and Mexico, and then possibly Korea, India, Brazil, and Taiwan. Of course, the pattern can differ depending upon the industry. Oil-related inventions tend to be filed only in the major oil producing countries. Sun IP has an excellent summary of deadlines and rules for patent filings in different countries.
Under the Paris Treaty, foreign applications must be filed within one year of the corresponding U.S. filing. That window can be extended by filing a Patent Cooperation Treaty (PCT) application within the one year period. If that is properly done, the deadline to file foreign in PCT countries is usually extended to two and half years (30 months) from the U.S. filing. The complete list of deadlines is available at the WIPO website.
One critical word of caution — most countries outside the U.S. are “absolute novelty” countries. Applications must either be (a) filed in those countries before the invention is made public, (through publication, sale, or otherwise), or (b) the foreign application must be able to claim priority to a U.S. or PCT application filed before the invention was made public.
Some countries, notably Japan, do not allow incorporation by reference. Thus, if one files a formal PCT or U.S. utility application claiming priority provisional application, and incorporates figures or other information by reference without actually inserting the information into the formal application, a subsequent filing in Japan will omit all of that referenced information. European practice does allow incorporation by reference, but the EPO will sometimes require the applicant to remove the incorporation statement, and literally add into the application whatever material is supposed to be incorporated. Accordingly, there could be serious problem if one tried to incorporate by reference an entire textbook or chapter on pharmaceutical development.
Most foreign countries have no such duty to disclose. On the other hand, several countries want to see a listing of all prior art references cited against corresponding applications in other countries. If the patent family is large, it is probably a good idea to keep a copy of all cited references for a family of application in a single folder, in addition to keeping copies in the various individual country folders. A spreadsheet can be used to list all the cited references, with different rows for each of the reference, and different column for each of the countries. The cells of the table can be sued to store the office action date that the reference was identified.
A Japanese regulation requires not only a listing of previously cited prior art, but also statements as to each reference. India requires a listing of all related prosecutions being prosecuted outside of India.
Almost all foreign countries are “absolute novelty” countries, meaning that your application will be rejected if the claimed invention was publicly known anywhere in the world before the filing date of the foreign application. Since US patents are published as of the issue date, the invention is disclosed once the patent issues.
The main exception is where one files a PCT application claiming priority to an earlier filing, and that earlier filing issues before the 30- or 31-month deadline to file national phase off the PCT application. For example, if your US priority filing date was January 1, 2025, then you would have until June 1, 2027 or July 1, 2027 to file in most foreign countries, even if the US patent issues in 2026.
Another possibility is that you can identify some additional features of the invention that are patentable over your previous disclosure. You can then file foreign applications claiming those features.
Still another possibility is that you can file foreign if your invention and application are still secret (i.e. not yet published). In that case you can abandon your US application to prevent publication, re-file the US application, receive the foreign filing license, and then file the foreign or PCT applications claiming priority to the re-filed US application.
The reason there are two deadlines is that some countries or regions have a 30-month deadline and some have a 31-month deadline. The World Intellectual Property Organization (WIPO) has guides to the relevant patent treaties, and one of its web sites lists which are 30-month countries/regions and which are 31-month countries/regions. This spreadsheet is particularly useful because it highlights the countries / regions where companies typically file. The commonly-filed 30-month countries / regions are highlighted in yellow, and the commonly-filed 31-month countries / regions are highlighted in green. Also, Sun IP has an excellent summary of deadlines and rules for patent filings in different countries.
Foreign countries generally always for filing of divisionals, i.e., child applications filed off a parent application. That process can usually be done any time during the prosecution. Foreign countries also generally allow for continuations, i.e., paying additional fees to continue prosecuting (arguing) a pending application. Confusingly, the patent offices in EPO, Japan and many other jurisdictions call such child applications “divisionals”, even though they are not dividing anything.
The US is the only country with a CIP practice. If you want to add new subject matter to an application, you need to file an entirely new application. Unfortunately, any previously published application, including your own, will likely be cited as prior art against the new application.
Yes, but the protection is usually not so broad as can be obtained under U.S. law. In the US one can push forward with claim sets broadly derived from the disclosure, specification, and drawing. In contrast, foreign countries generally limit claims to specific embodiments described in the specification.
Methods of treating diseases in humans are often unpatentable in foreign countries. Those that do allow medically-related claims often require a special claiming format or clever claiming strategies (e.g. “a method of shampooing hair by including <> in the shampoo”).
Methods of doing business and computer software are also generally unpatentable abroad. But here again it is possible to secure claims in those areas through clever wording.
These and other U.S. and foreign claiming strategies are extensively covered in the Green Fields Patenting and White Space Patenting books.
A European application can designate all of the following countries: Albania, Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Germany, Denmark, Estonia, Finland, France, Greece, Hungary, Ireland, Iceland, Italy, Liechtenstein, Lithuania, Luxembourg, Latvia, Malta Monaco, Montenegro, Netherlands, North Macedonia, Norway, Poland, Portugal, Romania, San Marino, Slovakia, Slovenia, Spain, Sweden Switzerland, Turkey, and UK. The most current list is available online. The EPO has an excellent website that includes a useful guide to the European patent system, free patent searching, and an interesting collection of facts and figures.
Once an EPO application is granted, the grant must be registered in countries of interest. For many years one had to register individually in the different countries, but as of 2024 one can register in the Unitary Patent (UP) group of 17 participating EU member states: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, and Sweden. Note that UK and Spain are not included in the UP group. Here’s a link to the official UP Guide. Registering in the UP group is much less expensive than individually registering in even the major countries, France, Germany, and Italy. Another potential benefit is that litigation is handled in a single location for the entire UP group. Otherwise, enforcement needs to be litigated in each registered country.
A PCT application is basically a door stop that extends the foreign filing deadline in most member countries to about 2.5 years after earliest claimed filing date. For example, if your US priority filing date was January 1, 2025, then you would have until June 1, 2027 or July 1, 2027 to file in most foreign countries. The reason there are two deadlines is that some countries or regions have a 30-month deadline and some have a 31-month deadline. The World Intellectual Property Organization (WIPO) has guides to patent treaties, and one of its web sites lists which are 30-month countries/regions and which are 31-month countries/regions. This spreadsheet highlights the countries / regions where companies typically file. The commonly-filed 30-month countries / regions are highlighted in yellow, and the commonly-filed 31-month countries / regions are highlighted in green. Also, Sun IP has an excellent summary of deadlines and rules for patent filings in different countries.
Failure to timely file in a jurisdiction forfeits patent rights in that jurisdiction. The European Patent Office (EPO) is a regional filing, so by filing through the EPO, one can take advantage of a single filing for essentially all of Western Europe.
Filing in foreign counties is expensive. In countries that require translation from English, filing with request for examination and handling of powers of attorney, assignments, etc, typically runs $6,000 – $7,000. Filing in the EPO can be done in English, but still runs about $6,000 – $7,000. Prosecution in foreign countries and regions usually takes 3-5 years to complete, with a cost of at least another $10,000 – $15,000 per country or region.
The PCT issues a search report and a written opinion. If no response is timely filed to the search report, then the search report essentially becomes the written opinion. Responses are optional, and many applicants choose to wait for national phase to argue against the cited references. One benefit to filing a response is that amendments made during the PCT stage are already included in any national stage filings.
In considering whether to file national / regional applications off the PCT filing, one should consider the cited prior art, expected cost of prosecution, and likely enforceability. Some countries have well developed legal systems to enforce patents, and in other countries enforcement is much more challenging.
When we file through the European Patent Office (EPO), all countries necessarily have the same claims (albeit as translations) because there is only one prosecution. Outside the EPO countries, however, the claims almost always vary from country to country. We could minimize the differences by conforming the claims in each country to a single updated set, but the degree of conformity would still be limited by the fact that the patent laws differ from country to country. In addition, conforming the claims in each country to a single updated set would mean that any obnoxious examiner in any country would have a choke hold on the breadth of claims in all countries, and the common claim set would be unnecessarily narrow. For all these reasons, we do end up with different claim sets across different countries, and that is the correct result.
The patent offices in New Zealand and some other countries give deadlines for “acceptance of the application” and applicants often worry that their applications will go abandoned if that deadline is not met. The reality is that the deadline is set to push the application forward. If the applicant is responding correctly to office actions, and in other ways the prosecution is proceeding properly, the examiner will usually keep extending the deadline.
Even if the deadline is reached, the applicant can appeal the then-existing rejections, and continue the prosecution.