No. 2: You “Over File” For Foreign Patents
Any entrepreneur paying attention to their enterprise’s IP will soon learn that patents are jurisdictional. You cannot enforce an issued U.S. patent in, for example, France. Conversely, you cannot enforce an issued French patent in the United States. That is, generally speaking, you must apply for and be granted a patent on a jurisdiction–by–jurisdiction basis.
Despite several international treaties related to IP rights, there is still no such thing as an “international patent.” Given this fact, entrepreneurs and their patent attorneys invariably have the following conversation:
Patent Attorney: “In what foreign countries would you like to file your patent application?”
Entrepreneur: “Well, where should I file?”
Patent Attorney: “You should consider filing in any country where you foresee a market for the product or service covered by the patent.
Entrepreneur: “It can be sold and used everywhere in the world!”
And thus begins the path down the road of good intentions but wasted money. The truth of the matter is, an overwhelming majority of small high-tech companies have no business filing international patents. (There are of course some exceptions – for example, if your firm has discovered a new AIDS or cancer drug!)
Why? For a single-invention patent portfolio it can easily cost more than $1M to obtain global protection, and tens of thousands of dollars per year to maintain the portfolio. A failure to realize this prior to the foreign filing process invariably leads to wasted money.
This is especially true when many small firms begin the foreign filing process, incur significant filing, translation and legal fees, then realize (too late) that they cannot really afford the costs of foreign filing, and then abandon their international applications. In such an instance, not only has money been wasted, but time and effort as well.
