How to Invent and Protect Your Invention: A Guide to Patents for Scientists and Engineers

12.6 CHOOSING WHETHER TO FILE A FOREIGN PATENT APPLICATION

Very few inventions obtain worldwide patent protection. Most inventors, consulting with their attorneys and technology transfer offices, choose just a few countries in which to file patent applications and pursue protection. After all, most inventions are not worldwide sensations, and even inventions that are eventually used around the globe may not be commercialized in every country within the 20-year patent period. In choosing whether to file a patent application in a particular country, an inventor must weigh the cost of filing the patent (e.g., translation fees, filing fees, attorneys’ fees, and taxes) plus the cost of maintaining the patent (e.g., maintenance fees and the cost of paying an attorney to sue infringers) against the revenue the patent is likely to generate. An inventor may look at the country's economy and the size of the market for the particular product or process, as well as specific business prospects and licensing opportunities. The inventor should also consider the amount of protection the patent will provide. In countries that do not rigorously enforce patent laws, the value of having a patent is diminished. To make matters even more complicated, inventors need to think about these factors not just on the date of filing, but also as they are likely to develop over the next 20 years. For example, China has improved its patent enforcement practices steadily over the past decade. While patent protection ...