Moritz Hönig
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Nationalization of an international patent application: Tips for Startups

First published 18 June 2024 by Moritz Hönig

When applying for patent protection worldwide, startups often use the Patent Cooperation Treaty (PCT) system. Under the PCT system, a single international patent application is filed, which is then nationalized in the desired countries or regions. The deadline for this is 30 or 31 months from the priority date for most countries/regions.

But in which countries or regions should a startup pursue its international patent application? Here are some considerations when selecting your countries and regions of interest:

Target Markets: File in countries/regions where you intend to exploit (e.g. manufacture, distribute, sell or use) your technology. Include the markets that are key to your industry and to your business strategy.

Block competitors: Nationalize in countries where key competitors operate or are located to build leverage.

Budget: Patent costs typically increase with national phase entry due to parallel prosecution in different countries. Therefore, plan your budget accordingly and remember that national/regional phase entry costs are due 30/31 months after the priority date.

Don't be driven by fear of missing out and consider the opportunity cost of extensive country lists: Since the national/regional phase entry deadline cannot be easily extended, some startups may be tempted to opt for rather extensive country lists out of fear of missing out. For example, some startups may be tempted to include not only their key markets, but also potential second- and third-tier markets - after all, you never know what will happen, and you certainly don't want to miss out, right?

Of course, there is no one-size-fits-all approach. For example, when pursuing an exit strategy, it may make sense to file a PCT application in a long list of countries/regions, thereby keeping all options open for a potential buyer, who may then trim the list of countries/regions at a later date. However, startups should also consider the opportunity cost of an extensive country list - in other words, what else could the money required for extensive nationalization be spent on instead? For example, it might be more effective to double down on strong IP protection in core markets and to strengthen the IP portfolio in these key markets by filing divisional patent applications or new patent applications, rather than including the n-th maybe-at-some-time-in-the-future country. With this approach, the costs allocated to the different countries/regions would be more in line with the commercial importance of the respective market.

Legal System and enforceability: Consider the enforcement mechanisms and capabilities of the countries of interest. Some countries have more experience enforcing patents than others.

These are general considerations. For specific advice, consult a patent professional to develop an effective global patent strategy.

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