This is a really difficult question, and a very important one. On the one hand, if you miss a country out then you may lose that chance forever. On the other hand, if you choose too many then the costs involved could easily overwhelm you – especially if you are running a startup.
The important thing to remember is that (in general) patents can be enforced against someone who is producing the patented item, or someone who is importing the patented item. So, if someone is producing an infringement in country “x” and then exporting it to country “y”, you can sue them in either country if you have a patent in both. That is obviously the ideal – i.e. to have that choice – as you can then choose the forum that is most convenient to you. That might be the country in which the item is produced, as the resulting injunction will stop all production, including production for export anywhere. Or it might be the country with the most favourable legal system, in terms of either its substantive law, its procedure, its language, or its costs.
But in reality, you can’t always have a free choice, because you can’t patent every invention in every jurisdiction. You have to make a decision ahead of time. So how do you do that?
Well, given that you can use the patent to stop people producing, or to stop them importing, then (in my opinion) the obvious route is to think carefully about your product and decide whether the production sites are limited, or the sales opportunities are limited, or neither.
If you’re Intel, then this is easy. Chip fabrication plants are really hard to build and there are only about 5 countries in the world where they are (or could be) sited. Cover those five and you’re done. But this option is more widely applicable than you might think; some technologies need a lot of skill or know-how, and that can sometimes be concentrated in a limited number of countries. IT, medical, automotive and the biotech industries all spring to mind.
Alternatively, if your widget can be produced anywhere at all (such as an injection-moulded item, for example), then think about the market. Does it chime with specific conditions or attitudes that are local to a defined number of countries? We acted for the inventor of the drawstring teabag, for example, for which the list of countries was easily definable based on a list of where teabags sold in significant numbers. Other examples might be horticultural equipment suited to a temperate climate, or adverse weather equipment, or high-tech medical equipment.
If you’re in neither group – you have something that can be produced anywhere and which is wanted pretty well everywhere, then you have a dilemma. An example would be a former client of mine who produced pipes, fittings and valves for distributing drinking water. Here, you need to rank countries in order of importance, in terms of their actual or potential share of the market, start at the top, and work your way down until either your budget runs out or you have covered enough of the total market for the item. Be realistic – if you have covered 90-95% of the available world market, then is it likely that someone will set up to supply the remaining 5-10%? And if they do, will you care?
This is one reason why the Patent Cooperation Treaty (the “PCT”, i.e. an International Patent Application) can often be a very useful option. Although it increases the end-to end cost slightly, it delays the country choice by up to 18 months. That extra time can often be crucial in finding out exactly where the markets and the competitors are, and can let you make a far better informed choice.
A parting shot – there is one country for which I am routinely asked “Is it too late to file in X?”. It’s not the only country I’m asked about in this way, but it does seem that every time I’m asked, that country is included in the question. That does suggest that there is one country that is routinely missed out, and whose absence is regretted. So think carefully about any decision not to include it. So, which is it?…