Issue 110 | September 19, 2003
US GAO Reports on Expert
Advice for Foreign Patenting
 On June 26, 2003 the United States General Accounting Office ("GAO") released its report to Congress on "Expert's Advice for Small Businesses Seeking Foreign Patents," No. GAO-03-910, available at  http://www.gao.gov/new.items/d03910.pdf.

The GAO is the investigative arm of Congress that evaluates federal programs and policies, and then provides analyses, recommendations, and other assistance to help Congress make informed oversight, policy, and funding decisions. For this report, the GAO was asked to (1) identify the factors that patent law experts believe small businesses should consider as they decide whether to seek patent protection abroad and provide information on how small businesses viewed these factors and (2) identify the steps that small businesses should take to improve their foreign patent efforts, according to our survey of patent law experts.

According to the survey results depicted below, the most important step that a small business can take to improve its foreign patenting efforts is to avoid disclosing information publicly about an invention before filing a U.S. patent application:

Although US law permits such disclosure, doing so can invalidate an applicant’s right to patent protection abroad. Other important steps that were identified include integrating foreign patents into long-range business planning and seeking patents in countries where meaningful protection is available and a return on investment is likely.

The report goes on to estimate that total foreign patent costs for obtaining (in one Office Action, without appeal or opposition) and maintaining (for 20 years) a patent with 15 claims in Canada, France, Germany, Ireland, Italy, Japan, South Korea, Sweden, and the United Kingdom is around $159,000 to $329,000 with the bulk of those fees going to U.S. attorneys and foreign representatives:

As for strategies to reduce costs, the report suggests exploring filing options under the Patent Cooperation Treaty, focusing on countries where English-language applications are accepted in order to minimize translation costs, concentrating patent efforts on key features of technology in countries where competition is most commercially-significant, and allowing patents to expire when they are no longer commercially valuable.    

For more advice on foreign patenting, please contact the author, Bill Heinze (billheinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley L.L.C. in Atlanta, Georgia USA.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.