Global IP Strategy for Startups: When and How to File Patents Abroad

Startups should consider filing patents abroad when they have a clear business need and a solid market strategy that extends beyond their home country. This is typically done after an initial domestic filing, using the Patent Cooperation Treaty (PCT) route to delay costs and give them time to make a more informed decision.

A global intellectual property (IP) strategy is crucial for startups to protect their innovations, attract investment, and build a competitive advantage. However, due to the significant costs, a strategic, phased approach is essential.

When to File Patents Abroad

Timing is everything for a startup's patent strategy. Filing too early can drain precious capital, while filing too late can mean losing your rights. Here are the key triggers and considerations:

• Before Public Disclosure: The absolute most critical rule is to file a patent application before any public disclosure, public use, or offer for sale of your invention. While the US offers a one-year grace period, most other countries have an immediate "first-to-file" system. Disclosing your invention before filing a patent application can completely forfeit your right to patent it in most international jurisdictions.

• Proof of Concept & Market Viability: Once you have a working prototype or a strong proof of concept and have identified a target market for your product or service, it's the right time to start thinking globally. An investor will want to see that your IP is protected in key markets.

• Strategic Markets: Instead of filing everywhere, focus on countries that are essential to your business model. This could be where your competitors are based, where your primary manufacturing will take place, or where your most lucrative customer base resides. A "two-thirds market filing strategy," which focuses on major economic hubs like the US, Europe, China, and India, is often a smart way to cover a majority of the global market.

How to File Patents Abroad

The most common and strategic way for a startup to file patents internationally is through the PCT system.

• The PCT Route: The Patent Cooperation Treaty (PCT) is a single, centralized filing system that simplifies the initial stages of the patent process. By filing a single "international" application, you can simultaneously reserve your right to file in over 150 member countries.

The Process: A Phased Approach ⏳

1. Initial Domestic Filing: A startup typically begins by filing a provisional or complete patent application in its home country (e.g., India). This establishes a priority date.

2. PCT International Filing: Within 12 months of the initial priority date, you file a single PCT international application with a receiving office (e.g., the Indian Patent Office or WIPO).

3. The International Phase (0 to 30/31 months): This is the most beneficial phase for a startup. During this period, the application undergoes an international search and a preliminary examination. You receive an International Search Report (ISR) and a Written Opinion, which give you a strong indication of your invention's patentability on a global scale. This 30 to 31-month window is crucial as it allows you to:

   • Defer Costs: Postpone the high costs associated with national filings, translations, and local patent attorney fees.

   • Gain Time for Market Research: Use the time to validate your business plan, identify key markets, and find investors or licensees.

   • Make an Informed Decision: Based on the ISR and the market validation, you can decide which specific countries are worth the financial investment for the final patent grant.

4. National Phase Entry (30/31 months): At the end of the PCT period, you must "enter the national phase" in each specific country where you want patent protection. This involves:

   • Filing the application with the local patent office.

   • Paying national filing and examination fees.

   • Hiring a local patent agent.

   • Translating the application into the local language.

Benefit of the PCT Route

It's not about avoiding costs, but about deferring them. By using the PCT, a startup can gain over two and a half years to prove its business model, secure funding, and then make a calculated decision about where to invest its patent budget. This strategy significantly de-risks the entire process and prevents the wasteful expenditure of capital on patents that may not be commercially viable.