Overseas patents: some warnings
Obtaining patents in other countries can be expensive, so you need to do some research and consider expert advice.
Do your research then choose:
- which countries you know you can make money from
- which countries have a strong reputation for penalising people who infringe patents.
IP Australia strongly advises that if you don’t use a patent attorney when applying for overseas patents, to take extreme care to not only understand the different fees required in each country but also when you’re required to pay them.
One Perth start-up has scaled back the number of countries it seeks to have patents in due to the cost.
The company owner, who wants to remain anonymous, says he has spent nearly $135,000 to date applying for patents in nine countries and is still in the provisional patent stage.
His company has decided to discontinue pursuing patents in all but three countries.
You need to carefully consider the history of other countries in regards to their ability to enforce patent protection.
There is a very wide perception that patenting in China, our largest trading partner for example, is pointless.
The country is perceived to an unrepentant copycat while very few people entertain the possibility of taking on a government-owned manufacturer over a patent infringement.
However, Scott Vilé, Principal at patent attorney firm Wrays, says in reality, enforcement in China is quicker and less expensive than in many developed countries.
“The Chinese patent system is based on the German patent system and is theoretically a really good system,” he says.
“The Chinese Government also has had, and continues to have, a major push towards improving the robustness of its IP systems.
“Based on 2017 filings, China is second to the US in regards to the number of international applications filed through the Patent Cooperation Treaty.”
He says the size of the market in China should not be overlooked when considering whether to patent there or not.
“If you could tap into just one per cent of the Chinese market, your client base would be over 14 million. Why wouldn’t you protect yourself in this market where the returns can be significant?