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Do I need an international patent?

Welcome to Highway1's hardware advice column, where we take questions from our startups and pose them to our amazing community of staff, mentors, partners, and suppliers.

Today’s question is about international IP protection.

Do I need an international patent?

For our answer, we turned to Highway1 mentor Jeffrey Schox, a legal expert specializing in patent law:

In my experience, this issue causes a lot of grief for most startups, and I see an equal amount of regret on both sides of the question. Some startups regret spending the money so soon. Other startups that grow really fast but didn’t file internationally often regret not having some form of international protection.

The notion of filing internationally needs to be balanced not only against the question of “Is this invention patentable?” which you’ll find out if you fast-track, but also “How valuable is this invention to us?” It’s “version 2 isn’t going to use any of this technology” vs. “this is fundamental to every single thing we’re ever going to do as a company.”

And of course, another factor to consider is how realistic is it that you’re going to enter those international markets anytime soon?

With everything, moderation is best. I love the PCT option, which allows you to delay this very expensive question of international patents. PCT stands for Patent Cooperation Treaty, and it’s like an international provisional; it delays the process 30 months from your earliest filing date. Being able to file the PCT at the same time as your US patent application, and often fast tracking the latter, allows you to figure out whether your idea is going to be patentable.

If you do decide to file internationally, I typically recommend Europe and China; these are two huge, influential markets trending in the right direction.

“To ignore Europe and China is often an area of later regret ”

Jeffrey Schox, Mentor - Schox Patent Group

If you go with the US, Europe, and China, that covers a good portion of the world, and you’re only filing three patent applications. I would not recommend filing more than six or so; that hardly ever makes sense, not for your first patent, and not for an early-stage company.

Note: While we hope this post was helpful, this isn’t legal advice. Every situation is different, and you should contact an attorney for your unique situation.

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