3 Ways to Save Money and Buy Yourself Time in the International IP Protection Process

A recent memo from the Small Business Administration (SBA) outlines the importance of intellectual property protection strategies for organizations that engage in international business. The SBA understands the importance of obtaining international patents and has devised a strategy to help small businesses cover the costs associated with the process. Here’s a brief summary of the memo so you can be informed and know what resources are available for your Delaware small business. 

If you are exporting products around the world, it’s imperative to consider intellectual property (IP) protection and take measures to ensure your assets are protected. The SBA states that “inadequate protection of intellectual property rights in foreign countries cost U.S. small business exporters one dollar for every three dollars of revenue gained.” Thus, you may be compromising profit margins if you’re neglecting IP protection measures.

Typically, a U.S. business will not take the necessary precautions, and a foreign competitor will develop a copycat product and export it into the U.S. This hurts the U.S. inventor and the U.S. economy.

Three Ways to Save Money and Buy Yourself Time in the International IP Protection Process:

There are several strategies to protect your product,  buy you time in the filing process, and simplify the application process.

WIPO Patent Cooperation Treaty (PCT): This treaty provides 12 months of extra time to file your patent as a priority right holder in 153 countries. Basically, you can file for PCT protection within 12 months of filing for your U.S. patent. This buys you a total of 30 months for the filing process in key export markets that have high amounts of counterfeiting.

This extra window of time can be used to help identify the right markets for your business to export and then you can file the patents in the appropriate markets within 30 months of the first U.S. patent filing. The SBA even offers STEP grant funds for eligible small businesses to help cover the costs associated with the PCT process. The following fees are eligible for reimbursement with STEP grant funds:

• USPTO PCT Transmittal Fee, up to $120
• USPTO PCT Non-electronic Filing Fee, up to $200
• USPTO PCT Search Fee, up to $1,040

Madrid Protocol: This is an efficient and cost-effective solution for registering your trademarks around the world. You complete a single application and pay one set of fees to apply for protection in up to 122 countries. The SBA now offers STEP grant funds to help cover the fees associated with this option, up to $250.

Hague Agreement Concerning the International Registration of Industrial Designs: This agreement covers industrial designs, and allows them to be protected in multiple countries with minimal formalities. SBA STEP grant funds may be used to cover part of the application transmittal fees, up to $60.

These options are ideal for small business startups that may struggle coming up with the funds associated with the patent process, or for companies who are launching new products and starting the patent application process. To learn more about how your business can benefit from the STEP grant and take advantage of these cost-saving options, contact us at export@delaware.gov.

Additional Resources: 

To learn more about international IP concerns and how to obtain your international patent, check out the resources from the World Intellectual Property Organization here.

You may find this course from the SBA helpful as well, which covers patents, trademarks, and copyrights.