By A. Jason Mirabito and Carol Peters, Contributing Legal Editors, Mintz Levin Cohn Ferris Glovsky and Popeo P.C., Boston [mintz.com]

We previously discussed filing U.S. patent applications outside the U.S. to obtain foreign patent protection ("Inside Patents," October 2004). This process can be expensive, so this column will focus on how to achieve cost-effective foreign patent prosecution.

One option for seeking foreign patent protection is to file an international application under the Patent Convention Treaty (PCT) initially.

The PCT application is filed within a year of an application's U.S. filing date and establishes the U.S. filing date as the date of invention in 129 PCT member countries in Europe, Asia, the Middle East, Africa, Central and South America, as well as in Canada and Australia.

Establishing a Worldwide Stake

For a single application filing fee, typically averaging between $3,000-4,000 (depending on the number of pages), a company can establish a worldwide stake in its invention.

However, certain countries, important to the electronics industry, are not members of the PCT, including Malaysia, Taiwan, Thailand and many Central and South American nations. National applications must be filed directly in these countries within one year of the U.S. filing date to seek patent protection.

The PCT application remains pending and unexamined for 30 months from the priority date. It then enters the national phase, during which individual national applications must be filed in individual countries to obtain patent rights in those countries.

Foreign patent filings can become expensive due to the many costs associated with them.

A company can use this time to determine in which foreign countries it wants to pursue patent protection and, thus, postpone the very large costs associated with prosecuting national applications.

The 30 months also allow a company to determine whether the product associated with the PCT application "takes off" (or does not) and thereby to decide whether a foreign application is worthwhile.

In addition, regional applications are available at the time of the national phase, including a European Patent Application that covers European countries with a single application filed and conducted in English.

During the PCT phase, an International Search Report (ISR) is automatically produced, reporting prior art references.

Although national patent offices conduct their own review, the ISR can give a company a fairly good idea of how well the application will fare at the national patent offices. This gives a company and its patent attorney the opportunity to consider whether to go into the national phase in view of the prior art references.

A foreign national patent agent or attorney must be retained to file and prosecute a foreign national application. Thus, costs can become relatively expensive, because they include attorneys' fees in addition to the official filing, examination and translation fees.

With careful and selective filing of foreign national applications only in those countries where a company either has existing or potential markets, manufacturing plants or competitors, foreign patent prosecution costs can be managed.

In our practice, we have seen many companies "over file" outside the U.S. without adequately considering costs and the strategic relevance of a particular country-only to later abandon some applications.

Your attorney can advise you, using available software programs, where to file and what costs to anticipate.