Experts Give Guidelines for Small Businesses Seeking Foreign Patents
August 11, 2003

Reprinted from SSTI Weekly Digest, a publication of the State Science and Technology Institute.

Experts' Advice for Small Businesses Seeking Foreign Patents identifies factors small businesses should consider when deciding whether to obtain patent protection abroad and the steps they should take to improve their patent efforts. The Congressional request spawning GAO's inquiry grew out of the apprehension that small businesses were not acquiring patent protection abroad, but were losing prospective sales in foreign markets.

Using surveys from an expert panel of 39 patent law attorneys, GAO outlined three critical factors: identifying and assessing the long-term (cradle to gave) costs of foreign patents; weighing the potential benefits of foreign patents and patent locations; and, the need to understand foreign patent laws and international treaties.

GAO then identified six key steps for small businesses to improve their foreign patent efforts:

Avoid divulging information about an invention prior to filing a U.S. application.

Become familiar with key dates and deadlines specified under U.S. foreign and international laws and take filing actions accordingly.

Consider the company's long-range business plan.

Manage patent portfolio as an asset and regularly review foreign portfolio.

Consider the nature and patentability of the product.

Only file in countries where protection will be meaningful and patent will produce a return on investment.

Expert's Advice for Small Businesses Seeking Foreign Patents (GAO- 03- 910) can be located at: http://www.gao.gov/

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