Generally speaking, filing a patent abroad can be significantly more costly than filing domestically. For example, obtaining a US patent can easily cost upwards of tens of thousands of dollars.

Given such high costs, applicants naturally hope for a smooth patent grant process abroad. No one wants to see their investment go to waste. Therefore, before applying for patents overseas, domestic companies should take precautions to mitigate risks. What should domestic companies be aware of to ensure a successful overseas application?

PART 1: Adhere to Priority Deadlines to Avoid Losing Overseas Filing Opportunities

If you have already applied for a patent domestically and intend to file for a patent overseas, you must do so within twelve months of the domestic application date, which is the priority period. Missing this priority deadline will result in the domestic application becoming prior art against the overseas application, significantly reducing the chances of obtaining an overseas patent grant.

PART 2: Choose the Right Overseas Application Route to Meet Your Company’s Needs

When entering the international patent arena, should you opt for the Paris Convention route or the PCT route? Many companies are unclear about the differences between these two options, often making blind choices that result in wasted money and negatively impact their overall patent strategy.

The PCT route involves an additional “PCT application” step, leading to higher overall costs. However, it provides approximately 30 months of preparation time, allowing more flexibility in choosing the countries for national phase entry. In contrast, the Paris Convention route offers only 12 months of preparation time, with a shorter application process and lower overall costs.

Specific considerations for different company situations include:

1. For Products with Fast Update Cycles and Clear Target Markets: The Paris Convention route can shorten the application process and reduce related costs, keeping pace with the product’s lifecycle.
2. For Unclear Target Markets, Crucial Products or Technologies, or the Need for Extended Examination Periods: The PCT route is more suitable, providing ample time for decision-making and allowing for strategic planning regarding which countries to enter.
3. For Companies Facing Short-Term Financial Pressure: Opting for the PCT route can extend the cost period up to 30 months, easing financial strain and allowing for more precise decision-making to avoid unnecessary expenses.

When choosing an overseas patent application route, it is essential to consider the technology/product, market, and costs comprehensively. The right choice depends on what best fits your company’s specific needs.

PART 3: Carefully Select Overseas Filing Countries Based on Intended Purpose

When choosing countries for overseas patent filing, domestic companies should be cautious not to be misled by superficial factors such as “low official fees,” “fast processing times,” or “ease of obtaining patents.” It’s important to remember that overseas patent application costs include not only official fees but also translation fees and subsequent service fees. Low official fees do not necessarily mean lower overall costs.

Additionally, in the pursuit of quick patent grants, many applicants opt for countries like the Netherlands, South Africa, and Luxembourg, which are known for their lack of substantive examination, resulting in fast and inexpensive grants. However, with growing attention on the issue of patent quality, such patents will likely become prime suspects for scrutiny and may even be automatically labeled as ” fraudulent patent”.

In the long run, companies are advised not to blindly select inappropriate countries solely to achieve quick patent grants, as this may result in numerous future risks.

The United States, for instance, offers favorable policies specifically targeting small and medium-sized enterprises, and its patent system is more comprehensive. Overall, obtaining a U.S. patent can be more cost-effective.

PART 4: Efficient Use of Domestic Applications to Expedite Overseas Applications

Under certain conditions, overseas applications can request accelerated examination through the Patent Prosecution Highway (PPH). This can potentially reduce the examination time for overseas applications to approximately one year, or even less than six months in some cases.

To utilize the Patent Prosecution Highway (PPH) for accelerating the examination of a patent application in the United States, certain fundamental criteria must be met. Firstly, the country or region of the first priority application must have established a PPH agreement with the United States. Secondly, the allowable claims in the first office action must substantially correspond to those in the U.S. application. Additionally, the U.S. application must be validly filed under the Paris Convention or via the PCT route.

In addition, it is crucial to expedite the domestic application process as much as possible. To leverage the priority of a domestic application for accelerating a U.S. invention patent via the PPH program, it is advisable for the domestic application to receive a favorable opinion within the 12-month Paris Convention period. While the PPH request must be submitted before the substantive examination of the U.S. application begins, it is not restricted to this 12-month timeframe. However, the sooner the better. In countries within the IP5 group, for example, the examination process for a standard patent application can take approximately two years. Therefore, implementing appropriate acceleration strategies for the domestic patent to obtain a grant quickly will facilitate the PPH acceleration process in the U.S.

PART 5: Caution Against Direct Translation of Domestic Applications for Overseas Submission

There are significant differences between patent systems and examination practices of different countries. Directly submitting domestic applications overseas without considering potential risks can expose domestic enterprises to substantial risks regarding patent grants.

One common issue is the subject matter eligibility problem. A particular technology might not face subject matter issues in other countries but could encounter a Section 101 rejection (subject matter eligibility issue) in the United States. Addressing such issues during the response phase can be challenging in any country.

By conducting evaluations and taking preventive measures during the drafting stage, it is possible to avoid Section 101 issues during the examination phase. Even if such issues are raised, prior preventive measures can make responses more proactive and reduce the risk of rejection.

This is just one example; there are many other aspects of application documents that should be addressed in advance.

Therefore, if a company submits a mere translated version of its domestic application to overseas markets without any optimization, it faces a higher risk of patent rejection.