Justin Simpson discusses the world’s most popular international filing destinations and how best UK small businesses can maximise IP protection in these countries from the outset.
Invented the world’s greatest bread slicer? Check. Filed a patent in the UK? Check. Ready to conquer the world? Not so fast.
To receive patent protection internationally, you’ll need to initially file a patent application in the UK. 12 months later, you need to decide what to do about overseas filings. Either buy more time (an extra 18 months) by filing an international ‘PCT application’ and then lodge a copy of your PCT into your chosen countries. Or, if you’re only going to get coverage in four or fewer countries (without changing your mind later for broader protection), you can file directly into those countries by filing a Direct (Paris Convention) application.
Make no mistake. Deciding which countries to file into is a major decision.
For starters, you need to realise that patents are either very cheap or very expensive. They’re cheap if your product is successful, and expensive if it’s not. Being successful at home doesn’t mean you’ll be successful abroad, so you need to choose those countries wisely.
Here are a few pointers for narrowing it down:
Follow the crowd
If you dig into the details at the World Intellectual Property Organization’s (WIPO) statistics centre and look for where UK-originating cases end up, you’ll find these top five destinations (in order of popularity):
- United States of America
- European Patent Office
Now why would you file in each of these places? Let’s take a look at these top five countries in turn.
United States of America
This one is pretty much a no-brainer. Their population is vast. They have money to spend and they speak pretty good English. If a product works in the UK, by and large the Americans will too. Enough said.
European Patent Office (EPO)
Filing with the EPO covers the 38 European countries that are members of the European patent Convention. While, once granted, you need to validate your patent in individual countries, those costs are going to be a lot cheaper once the Unitary Patent gets going some time in 2017. As for a market, again, it’s an obvious choice for UK companies. Europe is right across the Channel and represents an enormous opportunity. Whilst you’ll encounter language and cultural challenges, both from a selling and manufacturing point of view, you’re smart to secure some protection there.
Although China’s first patent laws came in in 1985, well after the UK’s Statute of Monopolies (some 361 years earlier in 1624), the Chinese have been well and truly jumped on the IP bandwagon. While in the olden days (ie the 1990s) China was known as a nation of imitators, today, with annual patent filings approaching 30,000 per year, the country is making its mark as a nation of innovators. In the field of digital communications, for example, the WIPO report cited Huawei Technologies and ZTE as the largest applicants, ahead of traditional communications king, US-based Qualcomm. The Wi-Fi dongle you’ve got on your desk was probably invented in China.
In the last seven years, the number of international (PCT) applications Chinese patentees have filed annually has grown from 7,000 to ~30,000. According to WIPO’s annual report, released in March, they have already overtaken Germany (~18,000 PCTs/year) and will shortly overtake Japan (~44,000 PCTs/year) in the #2 spot behind America (~57,000 PCTs/year).
China represents both an opportunity and a threat. An opportunity as they have a large population eager to adopt western innovations and a threat because they’re experts in manufacturing.
If you think you are going to market your products in China in the upcoming years, start building a portfolio now. If you have a hunch your competitors are likely to make their products in China (while undercutting your prices), a Chinese patent might help you stop them from doing so.
Still the world’s #2 patent producer with 44,000 international filings, Japan continues to be a popular destination for UK-originating inventions. While culturally and linguistically sales into Japan will be a challenge for many applicants, as a manufacturing destination, particularly of electronic goods, Japan should not be discounted.
One thing to consider is the large cost of patent filings in Japan, partly due to the high cost of living (so the patent lawyers need to charge healthy fees), but also due to the fact that everything needs to be translated into Japanese. The same is true of many foreign jurisdictions, but traditionally Japanese translation rates have been considerably higher than those of, say, China.
The WIPO report noted that, in the field of electronic machinery the top three patent filers were Japanese: Mitsubishi, Panasonic and Toyota.
Why file in Canada? Well, it’s next to America, has 35 million people and they too speak good English. There aren’t a great deal of cultural differences between Canadians and the British so a product that sells well in the UK is likely to sell pretty well in Canada. So from a sales point of view, you shouldn’t discount Canada.
Of the next top five destinations for UK companies (India, Australia, Korea, Brazil and Russia), you could probably put Australia in the same boat as a popular choice. Add too, the fact that both Canada and Australia are relatively cheap patenting destinations, with no translations needed and, in the case of Canada, an extended examination period (you can put off costs there for about five years) and you can see why they’ve made the top five list.
How can I make filing as easy and affordable as possible?
Prior to the rise of patent service providers, applicants didn’t have a choice in how they filed patent applications overseas. In the past, you coordinated with a local patent attorney and they coordinated the filings with attorneys overseas, at very high prices.
Nowadays you can still ask your attorney to handle the process or you can go to one of a number of ‘foreign patent filing providers’. There are several decent firms around that provide alternatives (usually cheaper) to the traditional patent attorney model.
Justin Simpson is founder and patent attorney at inovia.
Further reading on intellectual property