Do I need a full range of international patents to cover my US patent? 4 Answers as of March 23, 2011

Am I at a great disadvantage for licensing or selling my U.S. patent if I don't also have a full range of international patents covering it as well?

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DANIEL NESBITT | Hasse & Nesbitt
Many US patent owners will find that the lack of foreign patent rights either diminishes the value of their licensable patented technology, or scuttled the opportunity entirely, particularly when pursuing deals with regional or global companies. On the other hand, foreign patent rights can be quite expensive, not only to file the application itself, but also to prosecute the foreign applications to grants. Many countries require translations, which can be expensive. There are some strategies that a patent applicant can employ which can either reduce the costs of foreign patent applications, or postpone those costs (use of the PCT is one example here. Feel free to consult with a patent attorney about such opportunities.
Answer Applies to: Ohio
Replied: 3/23/2011
Mark S. Hubert PC
Mark S. Hubert PC | Mark Hubert
Only if it is going to be sold overseas in great quantities.
Answer Applies to: Oregon
Replied: 3/10/2011
Michael M. Ahmadshahi
Michael M. Ahmadshahi | Michael M. Ahmadshahi, Ph.D., Esq.
A US patent is enforceable only in the United States and its Possessions and Territories. Therefore, if you plan to enforce your patent in a foreign country, you must also file a patent application in that jurisdiction. A relatively simple and inexpensive procedure is afforded by filing a PCT (Patent Cooperation Treaty) application by which you may seek patents in multiple jurisdictions. As for affecting your bargaining position regarding licensing or selling your invention, it depends if the company or individual who is licensing or buying your invention has operation outside of the United States. If so, he may freely use your invention in foreign jurisdictions without permission.
Answer Applies to: California
Replied: 3/8/2011
Malhotra Law Firm, PLLC
Malhotra Law Firm, PLLC | Deepak Malhotra
It depends on where your potential licensees are located. If the potential licensees are in the U.S., U.S. patents may be sufficient. It is generally better to have multiple patents with different claims. It is not necessary to have foreign patents unless your primary potential licensees are located in other countries. Many patent owners are able to monetize their intellectual property only with U.S. patents. Sometimes it is necessary to sue to monetize patents and you should consider contingency fee enforcement. If you offer licenses, you may be reducing the potential damages that you could recover in a patent infringement lawsuit. You may also subject yourself to the risk of being sued for a declaratory judgment in an unfriendly jurisdiction. Hire competent counsel before considering licensing.
Answer Applies to: Washington
Replied: 3/8/2011
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