Patent Strategy for the Entrepreneur or Small Business

Recently, I was discussing with one of my clients what strategy to implement in moving forward with a provisional patent application filed less than a year ago.  Our discussions highlighted the pros and cons of filing domestically or internationally, especially for an individual entrepreneur or small business.  Here are some thoughts.

First, a note about the provisional patent system.   For most parties involved, the provisional patent system is a good one.  Especially in view of the new America Invents Act, where priority is given to the first inventor to file, the provisional system provides an effective and relatively inexpensive way to preserve priority while fine tuning your invention.  In addition, once the provisional application is filed, you have up to a year to file a US utility application or seek protection on an international scale.  In either case, the time provides an opportunity for increasing marketing efforts as well as further development of the invention.

For an individual entrepreneur or small business, there are obvious advantages to filing exclusively in the US.  First, the cost benefit of filing in the US is noticeably less (for a small entity it is about $800 vs. $3500 internationally).  In addition, the US markets are perhaps more developed and known at the time of initial development.  However, an international application, even with its increased cost, will provide a platform from which multinational patent protection may be obtained.  This may be a very attractive feature for a prospective investor or buyer.  The option to seek patent protection in  much of the world may outweigh the more costly upfront fees.  In addition, once the international application is filed, the decision regarding national phase filing will not expire for roughly 18 months.  In this rather substantial window of time, a marketing plan may be developed in which a third party may wish to assume the costs of the national phase filing or buy the innovation outright.  At any rate, I believe an international patent filing strategy is certainly something to consider when weighing your patent filing options.