Susan, You file a PCT if you intend to file international patents….and if you do. $3,000.00 will be the least of your worries.

When it’s all said and done, any real level of international protection will cost about $25-30,000

Mark

Thanks for the information, Mark.

I’m still trying to determine whether or not I want or need to obtain international protection for my patent. Is there some “rule of thumb” when it comes to making this decision?

I guess it would be naive to think that becuase the U.S. honors foreign patents other countries would do the same, but maybe worth looking into.

No rule of thumb really – but rarely worth it on a retail product. And when you factor in the cost to enforce it then match that against the profit on the item, it normally doesn’t make sense unless the item is worth in the millions

Mark

Even where you can’t afford to enforce a patent internationally, someone else probably can and will potentially be willing to license your patent and take advantage of the opportunity if there is money to be gained. (of course, tracking this someone else down might not be extremely easy)

But I guess I would generally agree with Mark. If the invention isn’t worth a fortune its probably, usually not worth it particularly if your budget is limited. Or, at the very least, I feel its a situation where if you have to ask, its a good sign that you might not want to bother. Foreign patent protection gets expensive (Mark’s estimate of $25-30k strikes me as potentially conservative) and if you are not sure whether you need foreign patent protection that just doesn’t speak to the kind of confidence to justify that sort of expenditure on a budget.

And there is a rule of thumb – it relates to what do you expect to potentially gain versus what do you expect to potentially lose? But, its not a simple rule of thumb, the answer depends on a variety of factors. Determining an answer involves examining the worldwide market for a product and the characteristics of the companies seeking to take advantage of that opportunity.

There is also a secondary rule of thumb – countries with legal systems that are not known to do a good job of protecting IP rights (i.e. China, India) are often not worth filing in.

Lastly, the US does not honor foreign patents. A foreign patent can block a US patent, like a US Patent can block a foreign patent. But you cannot enforce a US patent outside of the US, just like you cannot enforce a foreign patent in the US.

Susan
From my experience, $3000 is a reasonable price range for the PCT filing, more than half of that is required to cover the government fees imposed under the Treaty. However, the $25-30K estimate is far off the mark.
Of course this depends on the countries ultimately selected when it’s time to go to the national level in selected offices around the planet. Those requiring expensive translations have the most impact. Also, it’s important to know that most other countries have maintenance fees that must be paid each year both patent pending stage and post-grant (while in the US, M fees are payable only during post-grant period). For example, gaining patent coverage in a typical range of countries for a fairly basic, low tech invention…including all the expenses of local legal representatives, translations, annuities (maintenance fees) and your US agent/attorney charges…is often estimated at about $125K.
Your decision to go/no-go on foreign patent acquisition should follow (1) a thoughtful analysis of the geographic markets…and (2) who will cover those charges. If you are going to license your invention to a company, its value to that company is enhanced by the fact that you’ve preserved foreign filing possibilities – - meaning that you can command higher licensing payments. On the other hand, if you’re establishing your own business and will handle the marketing etc., you would probably find the financial burden of nurturing global prosecution (and any foreign litigation that might ensue) simply too heavy for independent inventor shoulders.
The bottom line is that you’re moving into big-time by taking on the PCT burden and need to step up the pace of your efforts to pass the tab to a fatcat licensee.
Regarding Katherine’s comment: global patents and other previously published technologies may be “qualified” as prior art in rejecting your patent application claims…but foreign patents are not honored in the US…just as US patents rights are meaningless abroad.
Hope this is helpful. Best DK

Thanks for all of your comments everyone. They’ve been very helpful.

I’m mostly concerned with protecting my product design within the United States. Even if someone were to produce a “knock off” product in China, I’d be happy if my U.S. Patent would offer protection from the product being imported into the U.S. for distribution and sale.

Don,

I should have clarified that the 30K was filing fees and didn’t include Interpreters and attorneys. One of my business partners just paid 30K for 4 countries.

Mark

Keep in mind that a PCT application will never itself mature into a patent. It basically streamlines the process of filing for patents in multiple countries. You still have to file national stage patent applications in each individual country.