Question
As a startup operating on seed-level funds we are often surprised by VCs who ask us about our IP protection. We are developing a technology that would be deployed internationally, so of course investors ask us how well we can protect it on a global level. But, if a patent in US+Canada alone already costs thousands of dollars to obtain, how can we manage international protection without going through a big funding round first? Seems like a chicken-and-egg sort of problem. I guess this is hardly a new problem so I would really appreciate your input and experience on what would be the best strategy for this! Thanks, Laura.
Answers: 4 public & 1 private
In addition to what Simone mentioned, a PCT application is probably your best "bang for your buck" for worldwide protection. Although it is more expensive than a national filing, a PCT application will grant you initial protection in up to 148 countries. However, as Simone also mentioned, you will need to eventually file for specific country/region protection no later than 30 months after the earliest filing date of your initial application.
Laura, what you say is very common as for a VC having global IP protection means both increasing the value of the start-up and securing the business operations - often with a view at exit. I echo what the other say - seek for expert advice as this is the most important investment you will be doing right now. As for international protection, once filed a first application (eg: US), you can wait 12 months and then file a PCT application. The PCT is relatively low cost (about $4K) and will allow you to secure the rights to seek for international protection in 18 months from the filing of the PCT whilst maintaining costs relatively low. As I said, any competent patent attorney should be able to assist you with this. Hope this helps.
I concur with Steven but the bottom line is that seeking international patent protection will require careful planning with a patent attorney and will require a decent amount of money just like many other aspects of a startup. However, the costs of securing patent rights are small relative to other aspects of starting/growing a business, and these are often essential costs. Most companies in the tech space have little to no value without strong IP protection. Meet with a patent attorney ASAP because it is very easy to lose all foreign patent rights by doing things in the US that bar a patent application abroad.
Unfortunately there is no easy answer. Patents are territorial and therefore if you want to have patent protection in a particular country or countries, you need to have patents in place in that country or those countries.
One possible "short-cut" or means for possibly reducing costs in obtaining patents is through the PPH - Patent Prosecution Highway. This program, which is now in effect within many countries that cooperate with each other, effectively permits you to obtain a patent quickly in a country where you have filed a patent application if you have already secured a patent in another country. So, for example, we had secured a patent here in the US for a client, and we had also filed a patent application for the client in Singapore. When the Singapore patent application came up for examination, they initially rejected the application, which IMHO was totally in error because they had cited prior art which was no better than the prior art cited during the prosecution here in the US, but then when we informed them that we had already secured a US patent, the SPO agreed that if we were content to patent claims in Singapore which matched the claims that we had obtained here in the US, they would allow the Singapore application, which is precisely what happened. Hence, prosecution was quick and relatively inexpensive thanks to the PPH because all we had to do was to effectively submit the matching claims to the SPO, no further arguments were necessary, and the patent was granted.
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