Foreign Filing

The Challenge

Our client, a seed-stage startup, expressed an interest in pursuing patent protection outside the U.S., but noted that, due to funding constraints, it wished to defer any related costs for as long as possible.

The Solution

We worked with the client to support their foreign filing needs. First file a temporary “provisional” U.S. patent application to preserve an early U.S. and international priority date for the technology at issue.  Shortly before the one-year anniversary of the provisional patent filing, we filed both a U.S. non-provisional patent application and an international “PCT” patent application.  With costs in mind, we elected to have the Korean patent office conduct the international patentability search for the PCT application.  (Having the Korean patent office, rather than the U.S. or European patent office conduct the search saved the client about $1,000 in government fees.)

The Results

Filing the international “PCT” patent application delayed the deadline for filing for patent protection in most industrialized countries outside the U.S by at least 18 months.  During this time, the Korean patent office provided a patentability search that included Asian patent documents that would not normally have been included or considered by a U.S. patent Examiner.  We also received an Official Action from the U.S. Patent Office that included the results of the U.S. patent Examiner’s patentability search.  Because no close “prior art” patents were identified by either the Korean or U.S. patent offices, the client had greater confidence in moving forward with pursuing patent protection in Europe, Canada, Mexico, and Australia within 30 months after their original provisional application was filed. 

 

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