International Patent Protection: Choosing the Country ‘Wisely’
The patent provides a monopoly over an invention to the inventor. The filing of patents and its grant is a long tedious process that takes up to 2-3 years. Due to its nature of the invention and the cost that is involved with R&D, it is highly imperative to decide where to seek the patent rights and the expenses involved. An effective strategy of filing for patent protection will be to seek protection in the country of interest, where the protection is cost-effective. This approach can be taken by those corporations who instead of going for PCT, instead leverage direct filing in countries of interest. Well-established companies generally take this approach. For an uneven market or those markets where the market research has not been done effectively, it is difficult to know which market will have the proper patent protection. Or even when the mature company enters into an immature market, this entails in it, difficulty in ascertaining the protection. In all such situations, the filing of the PCT application becomes an effective strategy.
Filing the PCT application is important if the inventor is uncertain regarding the country in which it can seek patent protection. Pursuing the international process can be advantageous for the inventor since it provides the international search report which can help the inventor to ascertain the area in which it can have maximum protection. Moreover, entering the international process can also help in giving an extra 30 month time for almost all member states.
Filing a PCT application have a lot of advantages, of which one of the foremost is providing the full 30 months. This is helpful in case the inventions are in the early stage or encompass basic scientific research. In this case, the inventor needs more time to bring the invention’s applicability, this 30 months can be used for making it more applicable. Moreover, the inventor can also use the period to seek sponsors for funding the R&D. This will help the inventor for translating it into a commercially useful invention and can help to build the economical and scientifically feasible invention. Many inventors try to have the strategy of investing less in the early stage since ascertaining from scientific breakthrough to commercially useful invention is difficult in the early stage and chances of failure are high.
Having said that, the inventor has the option to file the application in the domestic patent office, typically that country in which the applicant is residing in. Being unsure about where to start, the option of filing in the country of residence is the best. Single domestic filing is cheaper than that of international patent filing through PCT. 30 months times from the date of the earliest filing will help determine whether the invention is worth pursuing or not and will it make sense to seek patent protection. But in case, when the invention has a limited scope, it might not be a good idea for taking the recourse internationally.
Market and Invention
The market depends upon the economic viability and differs from country to country basis. There are countries where a huge amount of opportunity exist and there can be some country where no such viable opportunity exists. Popular places to get protection for many inventions are the United States, United Kingdom, Germany, Japan, and China. China has improved drastically in terms of protecting IP rights over the last several years. China undoubtedly provides a huge market and also a preferable patent term, which brings it to one of the most sought markets in the world. Having a preferable study over the market and then entering in it is always being advised.
With 58,990 PCT applications, applicants residing in China filed the most applications in 2019. This was the first year since the PCT System began operating in 1978 that applicants from the United States of America (U.S.) moved down to the second place, with 57,840 PCT applications filed. They were followed by Japan, Germany, and the Republic of Korea
There are other countries where entering can be beneficial, economically, seeing the market strength. South Korea has been the hub of some of the largest multi-national corporations in the world giving it a competitive edge over other countries. Japan is also the hub. Singapore has made its huge impact in South-east Asia. It's very important for a decision-maker to not only know the invention but also with the marketplace, the business environment, the legal issues, all of which give a complete analysis of the same. Therefore, understanding the market, commerce, and your invention, the business, and the legal environment can help in providing the highest potentially viable economic opportunity for the invention.
Author: Saransh Chaturvedi (an advocate) currently pursuing LLM from Rajiv Gandhi School of Intellectual Property Law (IIT Kharagpur). In case of any queries please contact/write back Global Patent Filing us at firstname.lastname@example.org.