a

GAO

United States General Accounting Office

Report to Congressional Requesters

July 2002 INTERNATIONAL 

TRADE

Federal Action 

Needed to Help Small 

Businesses Address 

Foreign Patent 

Challenges

GAO-02-789
Why GAO Did This Study

Small businesses are important

to the U.S. economy for their

roles in technological

development and job creation.

To fully protect and profit from

their innovations, small

businesses may need to obtain

patents in other countries.

Congressional requesters asked

GAO to identify whether small

businesses encounter any

impediments in seeking patents

abroad and to determine whether

any federal actions could help

small businesses overcome those

impediments. To answer these

questions, GAO convened an

expert panel of U.S. patent

attorneys and surveyed a limited

number of small businesses.

July 2002

INTERNATIONAL TRADE

Federal Action Needed to Help Small

Businesses Address Foreign Patent

Challenges

This is a test for developing highlights for a GAO report. The full report, including GAO's objectives, scope, methodology, and analysis is available

at www.gao.gov/cgi-bin/getrpt?GAO-02-789. For additional information about the report, contact Loren Yager (202-512-4346). To provide comments about

this test highlights, contact Keith Fultz (202-512-3200) or email HighlightsTest@gao.gov.

Highlights of GAO-02-789, a report to the Ranking Minority Member of the Senate Committee on Small

Business and Entrepreneurship and the Chairman of the House Committee on Small Business.

United States General Accounting Office

What GAO Found

Foreign patent costs are the most significant impediment that small

businesses face in trying to protect their inventions abroad, according to

the small businesses and patent attorneys GAO contacted. The minimum

cost to a small business to obtain and maintain a relatively simple patent

in the United States for 20 years could be about $10,000, based on a

scenario that GAO developed. However, extending this patent to nine

other countries, which could be a typical small business foreign patent

strategy, could cost between $160,000 and $330,000, according to GAO’s

research. Other impediments that the businesses and attorneys identified

included companies’ limited resources and limited foreign patent

knowledge; differences among foreign patent systems, which increase

costs and make the process more complex; and the existence of

challenging business climates and weak patent enforcement in certain

countries. Large businesses also face some of these impediments, but

have more resources and expertise to address them than small

businesses do.

Over 70 percent of both the small businesses and the patent attorneys

that GAO surveyed believed that federal efforts to promote

harmonization (i.e., reduce differences) among U.S. and foreign patent

systems and to reduce the high cost of foreign patents would be the best

way to help small businesses. Member states of the World Intellectual

Property Organization, including the United States, have taken some

steps to harmonize their patent systems and are currently negotiating to

reduce the more substantive differences that remain among them. A

majority of small businesses also thought that federal financial assistance

to help defray the high costs of foreign patents would be useful, but

many on the patent attorney panel did not support this step. Instead, a

majority of the patent attorneys believed that informing and educating

small businesses about foreign patents would be worthwhile.

G A O

Accountability Integrity Reliability

Highlights

What GAO Recommends

GAO recommends that the U.S.

Patent and Trademark Office

obtain input from small

businesses and other interested

parties to assess the advantages

and disadvantages of various

patent harmonization options.

GAO also recommends that the

Small Business Administration

make information about key

aspects of foreign patent laws,

procedures, and costs readily

available to small businesses.

The U.S. Patent and Trademark

Office and the Small Business

Administration agreed with our

recommendations.
Page i GAO-02-789 Foreign Patent Challenges

Contents

Letter 1

Results in Brief 2

Background 4

Small Businesses Encounter Cost and Other Impediments When 

Seeking Foreign Patents 6

Impediments Negatively Affect Small Businesses’ Foreign Patent 

Decisions 21

Several Federal Actions Could Help Small Businesses Overcome 

Impediments 25

Conclusions 32

Recommendation for Executive Action 33

Agency Comments and Our Response 34

Appendixes

Appendix I: Objectives, Scope, and Methodology 36

The Expert Panel 36

The Small Business Survey 39

Appendix II: Information about the Small Business Survey Population 45

Size of Businesses Surveyed 45

Industries of Businesses Surveyed 46

Locations of Businesses Surveyed 47

Patent Behavior of Businesses Surveyed 48

Appendix III: Members of GAO’s Patent Attorney Panel 50

Appendix IV: Results of the Patent Attorney Panel Surveys 53

Phase I 53

Phase II 53

Phase III 79

Appendix V: Results of the Small Business Survey 82

Appendix VI: Processes and Costs Involved in Obtaining Foreign Patent 

Protection: A Hypothetical Scenario 88

Estimated Cost of U.S. Patent 89

Filing for a Foreign Patent 90

Obtaining a Foreign Patent Using PCT 92

Maintaining a Foreign Patent 99

U.S. Attorney and Foreign Representative Fees 101

Total Scenario Costs 102

Scope and Methodology 103
Contents

Page ii GAO-02-789 Foreign Patent Challenges

Appendix VII: Comments from the U.S. Patent and Trademark Office 106

GAO Comment 107

Appendix VIII: Comments from the Small Business Administration 108

GAO Comment 110

Appendix IX: GAO Contacts and Staff Acknowledgments 111

GAO Contacts 111

Staff Acknowledgments 111

Glossary 112

Tables Table 1: Minimum Estimated Costs for a Small Business to Obtain 

and Maintain U.S. and Foreign Patent Protection for a 

Single Invention 12

Table 2: Statistics on the Number of Small Businesses Screened and 

Selected for GAO’s Survey 42

Table 3: Foreign Patent Experience of the Small Businesses That 

GAO Surveyed 43

Table 4: Descriptive Statistics on Impediments That Businesses 

Face in Seeking Foreign Patent Protection 55

Table 5: Descriptive Statistics on Suggestions for Small Businesses 

to Consider When Seeking, Obtaining, and Maintaining 

Foreign Patent Protection 67

Table 6: Descriptive Statistics on Public Assistance Options to Help 

Small Businesses Overcome Impediments to Seeking, 

Obtaining, and Maintaining Foreign Patents 74

Table 7: Estimated Costs to Obtain and Maintain U.S. Patent for 20 

Years 90

Table 8: Estimated International Stage Patent Costs 97

Table 9: Estimated National Stage Patent Costs 99

Table 10: Estimated Costs Involved in Maintaining a Foreign Patent 

in Nine Countries for 20 Years 101

Table 11: Estimated U.S. Attorney and Foreign Representative 

Fees 102

Table 12: Estimated Total Foreign Patent Costs 103

Figures Figure 1: Small Businesses’ and Patent Attorneys’ Views on Types 

of Foreign Patent Impediments That Small Businesses 

Face 8
Contents

Page iii GAO-02-789 Foreign Patent Challenges

Figure 2: Small Businesses’ and Patent Attorneys’ Views on the 

Stages of Foreign Patent Costs as Impediments to Foreign 

Patent Protection 9

Figure 3: Small Businesses’ and Patent Attorneys’ Views on 

Company Characteristics as Impediments to Foreign 

Patent Protection 14

Figure 4: Small Businesses’ and Patent Attorneys’ Views on 

Differences among Foreign Patent Systems as 

Impediments to Foreign Patent Protection 17

Figure 5: Small Businesses’ and Patent Attorneys’ Views on 

Individual Country Characteristics as Impediments to 

Foreign Patent Protection 20

Figure 6: Patent Attorneys’ Views on Small Businesses’ Level of 

Foreign Patent Protection 23

Figure 7: Patent Attorneys’ Views on the Differences in 

Impediments That Large and Small Businesses Face 24

Figure 8: Small Businesses’ and Patent Attorneys’ Views about 

Possible Federal Actions to Overcome Foreign Patent 

Impediments 26

Figure 9: Patent Attorneys’ Views on the Usefulness and Feasibility 

of Federal Financial Assistance for Reducing Foreign 

Patent Costs 30

Figure 10: Patent Attorneys’ Views on Usefulness of Information 

That Federal Government Could Provide to Small 

Businesses 32

Figure 11: Number of Employees in Small Businesses That GAO 

Surveyed 45

Figure 12: Industries of Small Businesses That GAO Surveyed 46

Figure 13: Locations of Small Businesses That GAO Surveyed 47

Figure 14: Number of U.S. and Foreign Patents Held and Pending 

among the Small Businesses That GAO Surveyed 48

Figure 15: Foreign Countries or Locations in Which Small 

Businesses That GAO Surveyed Held Patents 49

Figure 16: Patent Attorney Reponses to Questions 11 and 12 of 

Phase II 63

Figure 17: Patent Attorney Responses to Questions 13, 14, and 15 of 

Phase II 65

Figure 18: Patent Attorney Responses to Questions 17 and 18 of 

Phase II 71

Figure 19: Patent Attorney Responses to the Four Questions in 

Phase III 80
Contents

Page iv GAO-02-789 Foreign Patent Challenges

Figure 20: The International and National Stages of the PCT 

Process 94

Abbreviations

EPO European Patent Office

IP intellectual property

PCT Patent Cooperation Treaty

SBA Small Business Administration

USPTO U.S. Patent and Trademark Office

WIPO World Intellectual Property Organization
Page 1 GAO-02-789 Foreign Patent Challenges

United States General Accounting Office

Washington, D.C. 20548

A

July 17, 2002 Letr

The Honorable Christopher S. Bond

Ranking Minority Member

Committee on Small Business

and Entrepreneurship

United States Senate

The Honorable Donald A. Manzullo

Chairman, Committee on Small Business

House of Representatives

Small and start-up businesses1

 are principal sources of innovation and 

therefore play an important role in technological development. These firms 

are also vital to U.S. economic growth—statistics show that small 

businesses created more than 5.5 million new U.S. jobs during the 1990s.2

In order to prosper, small businesses, particularly those in high-technology 

industries, must be able to protect and profit from the innovations that flow 

from their research and development expenditures. In the current global 

economy, protecting innovations in the United States and abroad is an 

increasingly important component of small businesses’ ability to develop 

markets in other countries. One way to globally protect innovations is to 

obtain U.S. and foreign patents. While small businesses held about 11 

percent of the U.S. patents granted to U.S. entities in 2000, available 

research indicates that small businesses are less likely than large 

businesses to seek patents overseas, even when their inventions are of 

similar value.3

Concerned that some small businesses, particularly high-technology firms, 

were not obtaining patent protection overseas and thus were losing 

potential sales in foreign markets, you asked us to analyze (1) whether 

1

Under 13 C.F.R. part 121, the Small Business Administration (SBA) established various size 

standards, based on economic activity or industry, for determining what is a small business 

for purposes of eligibility for its programs. Based on the SBA standards, we defined a small 

business for purposes of conducting our work as having 500 or fewer employees. 

2

See U.S. Bureau of the Census, Statistics of U.S. Businesses (Washington, D.C.: n.d.), 

available at http://www.census.gov/epcd/www/smallbus.html (table 2d).

3

Mogee Research and Analysis Associates, Foreign Patenting Behavior of Small and Large 

Firms, prepared under contract for the Office of Advocacy, U.S. Small Business 

Administration (Reston, Virginia: Mar. 5, 1996). An update to this study is forthcoming.
Page 2 GAO-02-789 Foreign Patent Challenges

small businesses face impediments in obtaining foreign patent protection; 

(2) what impact any impediments have on their foreign patent decisions; 

and (3) whether any federal actions could help small businesses overcome 

the impediments they may face in obtaining foreign patents. 

To meet our objectives, we convened a Web-based panel of 39 U.S. patent 

attorneys with expertise in obtaining foreign patents for both small and 

large businesses. In the panel’s three phases, the patent attorneys identified 

and assessed a range of foreign patent impediments and possible federal 

actions to address them. Based on the attorneys’ input, we then developed 

a questionnaire that we administered to a random sample of small 

businesses that had obtained or considered obtaining foreign patents in the 

last 5 years. The 38 businesses that participated in our survey operated in a 

cross-section of industries; more than 80 percent of them held foreign 

patents. Although we initially randomly selected the sample of small 

businesses, the number we ultimately consulted was limited because 

information was not available for a substantial number of businesses. 

Therefore, the information in this report does not represent the overall set 

of small businesses that seek foreign patent protection. (App. I provides 

further details about our methodology and its limitations. App. II contains 

information about the businesses we surveyed, and app. III lists the 

members of the patent attorney panel.) 

Results in Brief The cost of obtaining, maintaining, and enforcing foreign patents is the 

most significant foreign patent impediment that small businesses 

encounter, according to the small businesses and patent attorneys that we 

consulted. Patenting abroad is a costly endeavor for several reasons. For 

example, (1) companies typically seek patents in several other countries 

simultaneously and incur costs in each location; (2) some foreign patent 

office fees are substantially higher than corresponding U.S. Patent and 

Trademark Office fees; and (3) foreign patent laws and requirements are 

complex and difficult to understand, causing companies to incur 

substantial U.S. and foreign legal fees. As a result, foreign patent protection 

is more expensive to acquire than U.S. patent protection. We developed a 

hypothetical scenario to estimate patent costs and determined that a small 

business could pay about $10,000 to obtain and maintain a U.S. patent on a 

single invention for 20 years. However, it could pay at least $160,000 to 

$360,000 to obtain and similarly maintain patents in nine other countries 

for the same invention (this amount of foreign patent coverage could be 

considered typical for a small business). Small businesses would incur 

such costs for each patent they seek to file outside of the United States. 
Page 3 GAO-02-789 Foreign Patent Challenges

Other factors impede small businesses’ efforts to patent abroad as well, 

according to the groups we surveyed. For example, the businesses and 

patent attorneys said that small businesses tend to have limited resources 

to pay foreign patent costs, a limited overseas presence to enforce their 

patents, and limited knowledge about foreign patents. In addition, 

differences among other countries’ patent laws, standards, and procedures 

heighten the level of complexity associated with obtaining foreign patents. 

Finally, unfavorable business climates and the lack of enforcement in some 

countries also impede small businesses, according to our survey results.

The businesses we surveyed said that the impediments they encounter 

have discouraged or prevented them from obtaining as much foreign patent 

protection as they would like to have. A majority of the patent attorneys 

said that most small businesses hold fewer foreign patents than they need, 

primarily because the impediments are too difficult for them to overcome. 

Most of the attorneys believed that large and small businesses generally 

encounter many of the same impediments to acquiring foreign patents, but 

the impediments have a more negative effect on small businesses. Large 

businesses are better equipped to deal with foreign patent impediments, 

the attorneys said, because they have more financial resources and foreign 

patent expertise and are better able to enforce their patents abroad. 

The small businesses and patent attorneys thought that certain federal 

actions could help small businesses overcome the impediments they face in 

seeking foreign patent protection. More than 70 percent of the survey 

respondents in both groups supported federal efforts to promote 

harmonization among the world’s patent laws and systems and to seek 

patent cost reduction. Patent law harmonization efforts have been ongoing 

in the World Intellectual Property Organization for at least 20 years, and 

while some success has been achieved, many differences among member 

countries’ patent laws remain. Harmonization could provide many 

advantages, such as agreement on the types of innovations that can be 

patented, acceptance among national patent offices of one another’s work, 

and substantially reduced costs. However, achieving harmonization could 

require significant changes to U.S. patent laws. In addition to supporting 

harmonization efforts, nearly 70 percent of the businesses thought that 

federal financial assistance to help defray the costs of foreign patents 

would be helpful, but less than 50 percent of the patent attorneys held this 

view. Most of the patent attorneys regarded federal financial assistance as 

an indirect solution to the broader problem of a lack of uniformity among 

global patent systems. Conversely, nearly 70 percent of the attorneys, but 

only about 40 percent of the businesses, thought that making information 
Page 4 GAO-02-789 Foreign Patent Challenges

about foreign patents available to small businesses, particularly those that 

are just beginning to consider foreign patents, would be useful. In this 

report, we recommend that the government assess the advantages and 

disadvantages to U.S. businesses of various options for further patent 

harmonization. However, given the long-term nature of these efforts, we 

also recommend that the government make information about key aspects 

of obtaining foreign patent protection available to small businesses to 

assist their efforts. 

Commenting on a draft of this report, the U.S. Patent and Trademark Office 

and the Small Business Administration indicated that they agreed with our 

recommendations but lacked the expertise to independently develop 

information about foreign patent protection. We agreed and modified the 

recommendation to direct the agencies to collect and make available 

existing information about foreign patents. 

Background A patent is the grant of a property right that a national government or an 

international intergovernmental authority issues for an invention. Patents 

cover inventions of new products as well as new processes to make or use 

new or existing products. While patent rights vary by country, a patent 

typically gives an inventor the right to exclude others from commercially 

making, using, offering to sell, or importing the invention in the country 

that granted the patent during the patent term, usually a 20-year period 

from the application date. Any violation of that right is considered a patent 

infringement. Patent owners that wish to address the infringement of, or to 

“enforce,” their patent rights must initiate a legal action in the country or 

countries where the infringement occurred. (Our glossary defines the 

patent-related terms we use in this report.) 

U.S. companies and inventors that seek patent protection in the United 

States file patent applications with the U.S. Patent and Trademark Office 

(USPTO). They are typically represented by a patent attorney, who drafts 

their patent application and responds to USPTO questions about the 

application. Before granting a patent, USPTO will search for relevant “prior 

art” (all patent and nonpatent literature that helps determine whether a 

new patent will be granted) and examine applications to, among other 

things, determine whether the claimed invention is “new and nonobvious.” 

USPTO provides information about the U.S. patent system to independent 

inventors that are considering whether to obtain a U.S. patent, but it 

provides little information about foreign patent systems.
Page 5 GAO-02-789 Foreign Patent Challenges

U.S. companies and inventors that seek foreign patent protection may file 

either (1) separate patent applications with each national or regional patent 

office where they desire patent protection, or (2) an international patent 

application under the Patent Cooperation Treaty4

 (PCT) that the World 

Intellectual Property Organization (WIPO) administers.5

 While the PCT 

process does not culminate in a “world patent,” because such a patent does 

not exist, it does enable applicants to indicate the countries where they 

might like to seek patent protection and to undergo a single prior art search 

and single examination before deciding whether and in which countries 

they wish to obtain patents. In order to preserve their rights to the 

invention they seek to patent, U.S. companies and inventors must file all 

foreign patent applications related to the invention, including PCT 

applications, within 1 year from the date on which their U.S. application 

was filed. If they do not file with this 1-year period, companies and 

inventors lose certain rights that an international treaty provides, which 

may in turn affect their ability to obtain patent protection abroad.6

 Foreign 

patent applications must conform to the patent laws and requirements in 

the countries where protection is sought.

U.S. companies and inventors that seek to patent abroad incur costs to 

apply for, obtain, maintain, and enforce their patents. For example, 

4

The PCT, adhered to by 115 countries, is an international system that facilitates the filing of 

multiple patent applications and allows nationals or residents of PCT member countries to 

simultaneously seek patent protection in other PCT member countries. PCT applications 

are generally filed with the applicant’s national patent office. The International Searching 

Authority chosen by the applicant (a national patent office or intergovernmental 

organization) conducts a prior art search. If the applicant desires, an International 

Preliminary Examination Authority chosen by the applicant (also a national patent office or 

intergovernmental authority) examines the application. Applicants that choose this route 

must still file patent applications in the countries where they wish to hold patents, but the 

treaty allows them to delay filing these applications for up to 30 months from the applicant’s 

original filing date.

5

WIPO was established in 1970 and is one of 14 specialized agencies in the United Nations 

system. Based in Geneva, Switzerland, and composed of 171 member states, WIPO 

promotes intellectual property protection, facilitates adoption of intellectual property 

treaties, and plays an important role in the global administration of intellectual property 

regulations. 

6

Under the 1883 Convention for the Protection of Industrial Property (known as the Paris 

Convention), as amended, 163 countries give limited recognition to each other’s patent 

application filing dates. Under the convention, for 1 year after the date of filing of a U.S. 

patent application, basically the same application may be filed as a foreign counterpart 

application in any country that is a convention member. Applicants’ rights are similarly 

protected if they file a PCT application within 1 year of their original filing date.
Page 6 GAO-02-789 Foreign Patent Challenges

national patent offices typically charge fees when patent applications are 

filed, as well as when they search for prior art, examine applications, and 

grant patents. In addition, companies and inventors may incur costs to have 

patent applications translated into other languages. National patent offices 

also charge fees to maintain or keep a patent active after it has been 

granted. Whereas most USPTO fees are reduced by half for small entities 

(defined as a small business, independent inventor, or not-for-profit entity), 

most foreign patent offices do not offer similar fee reductions. In addition 

to varying national patent office charges, companies and inventors must 

pay for the services of U.S. and foreign patent attorneys or agents 

throughout the process, particularly if they take any enforcement action 

related to their patents.

Small Businesses 

Encounter Cost and 

Other Impediments 

When Seeking Foreign 

Patents

Small businesses face many obstacles in obtaining foreign patents, but cost 

is the greatest impediment, according to the small businesses and the panel 

of patent attorneys we surveyed. Certain characteristics of small 

businesses themselves are also great impediments, the survey respondents 

said. These latter include the amount of resources that small businesses 

can allocate for foreign patent costs and the tendency for these businesses 

to have a limited overseas presence. In addition, the patent attorneys 

believe that small businesses lack sufficient knowledge about foreign 

patents. This causes them to make inappropriate decisions about obtaining 

and managing their patents. Both groups believe that differences among 

foreign patent systems, such as variations in the extent and type of 

protection that other countries’ patent systems provide, create challenges. 

Finally, certain aspects of individual countries, predominantly a country’s 

market or business climate and the extent to which it enforces its patents, 

can present significant impediments for small businesses. (App. IV contains 

the results of the patent attorney panel. App. V contains the small business 

survey results.)

Cost Is the Primary 

Impediment for Small 

Businesses Seeking Foreign 

Patent Protection

The impediments that the small businesses and patent attorneys rated fell 

into six broad, overlapping categories: (1) costs associated with foreign 

patents, (2) characteristics of companies, (3) differences among foreign 

patent systems, (4) characteristics of individual countries, (5) factors 

related to USPTO (such as the quality and timeliness of its work), and (6) 
Page 7 GAO-02-789 Foreign Patent Challenges

availability of advice about foreign patents.7 About 80 percent of both the 

small businesses and patent attorneys believe that the costs associated 

with foreign patents—including costs to acquire, maintain, and enforce 

them—greatly impede small businesses’ efforts to patent abroad (see fig. 

1).8

 (We asked the businesses and the patent attorneys to indicate whether 

the foreign patent impediments that they identified in each category 

affected small businesses to a very great extent, a great extent, a moderate 

extent, some extent, or little to no extent.) The two groups also held fairly 

consistent views about the relative importance of other types of 

impediments. For example, less than 25 percent of both the small 

businesses and patent attorneys thought that USPTO-related factors and 

the availability of U.S. or foreign legal advice about foreign patents were 

great impediments to small businesses. However, the patent attorneys were 

more likely than the small businesses to view company characteristics, 

differences between foreign patent systems, and individual country 

characteristics as areas that greatly impeded small businesses’ foreign 

patent efforts. 

7

Based on the patent attorneys’ responses to the first phase of our panel, we developed a list 

of 46 types of impediments that we grouped into six categories. We then asked the patent 

attorneys and small businesses to rate the items in each category. We imputed each group’s 

views about the significance of each category based on their ratings of individual items in 

the category.

8

This conclusion is consistent with the results of another study, Joseph J. Cordes, Henry R. 

Hertzfeld, and Nicholas S. Vonortas, Survey of High Technology Firms, a study prepared for 

the Office of Advocacy, Small Business Administration (Washington, D.C.: George 

Washington University, February 1999). 
Page 8 GAO-02-789 Foreign Patent Challenges

Figure 1: Small Businesses’ and Patent Attorneys’ Views on Types of Foreign Patent Impediments That Small Businesses Face

Note: Percentages reflect the number of respondents who rated items within each category as posing 

a great or very great impediment. Thirty-eight small businesses responded to our survey, and 39 

patent attorneys participated in our panel. The number of respondents who rated individual items may 

be lower. See appendixes IV and V for the actual number of respondents to each item.

Source: GAO analysis of small business surveys and patent attorney panel questionnaires.

Foreign Patent Acquisition 

Costs Are Considered to Be 

More Problematic Than 

Maintenance or 

Enforcement Costs 

We asked the small businesses and patent attorneys to rate several costs 

associated with foreign patents, including patent acquisition, maintenance, 

and enforcement costs, in order to understand whether certain patent 

stages pose more of an impediment than others (for example, whether 

small businesses can afford to obtain foreign patents but cannot afford to 

keep or enforce them). As shown in figure 2, nearly 90 percent of the 

businesses and attorneys regarded patent acquisition costs as a great 

impediment and thus rated these costs somewhat higher than maintenance 

or enforcement costs. 
Page 9 GAO-02-789 Foreign Patent Challenges

Figure 2: Small Businesses’ and Patent Attorneys’ Views on the Stages of Foreign Patent Costs as Impediments to Foreign 

Patent Protection

Note: Percentages reflect the number of respondents rating each item as posing a great or very great 

impediment. Thirty-eight small businesses responded to our survey, and 39 patent attorneys 

participated in our panel. The number of respondents who rated individual items may be lower. See 

appendixes IV and V for the actual number of respondents to each item.

Source: GAO analysis of small business surveys and patent attorney panel questionnaires.

According to the businesses and patent attorneys and our analysis, several 

factors cause foreign patents to be expensive and typically more costly 

than U.S. patents. 

• Companies typically file in several countries at a time, but the exact 

number depends on the company’s business needs and strategies. For 

example, the overall patent strategies of two-thirds of the businesses we 

surveyed ranged from obtaining patents in multiple countries in one 

region to patenting virtually worldwide. The remaining one-third of the 

businesses said they typically patent in only one or a few selected 

countries. 

• Applicants incur multiple costs in each country, and many countries’ 

patent office fees are higher than comparable U.S. fees. Moreover, many 

of these foreign charges are redundant. For example, applicants may 
Page 10 GAO-02-789 Foreign Patent Challenges

incur multiple search and examination fees, because each national 

patent office where they file may conduct its own prior art search and 

its own examination. Even applicants that use the PCT process to 

initially obtain a single search or examination may still be required to 

pay additional examination fees to the national patent offices where 

they choose to file applications. 

• Most patent applications that are filed abroad must be translated into a 

foreign language at some point. Nearly all of the patent attorneys we 

surveyed regarded the cost of such translations as a great impediment 

for small businesses. Several businesses and patent attorneys estimated 

that translating an application into Japanese, for example, can cost 

about $8,000-$10,000 or more. 

• Applications must be customized to meet the patent laws and 

requirements of each country, and businesses must be represented by 

foreign patent attorneys or agents in each country where they file 

applications. These requirements add to the cost of the U.S. and foreign 

legal fees that businesses incur.

Based on this information, we developed a hypothetical scenario to 

estimate the minimum cost for a small business of obtaining and 

maintaining patent protection for a single invention of minimal complexity 

in the United States and nine major countries.9

 Such a foreign patent 

strategy could be considered typical for a small business, according to the 

attorneys we consulted. As shown in table 1, while the minimum cost to 

obtain and maintain patent protection in the United States on the invention 

in our scenario would be about $10,000, the minimum foreign costs could 

range from about $160,000 to $330,000.10 These costs include foreign patent 

office and U.S. or foreign attorney charges for developing and filing a 

patent application, obtaining an issued patent, and maintaining an issued 

9

To develop a rough estimate of foreign patent costs, we created a relatively straightforward 

foreign patent scenario that several patent attorneys on our panel advised us could be 

considered typical for a small business. In our scenario, a fictitious business sought patent 

protection for an invention in Canada, France, Germany, Ireland, Italy, Japan, South Korea, 

Sweden, and the United Kingdom, countries where U.S. patent applicants may be likely to 

file (see app. VI).

10These estimates are expressed in current year dollars because of a lack of information 

about the timing and amount of future expenditures for patent maintenance and attorney 

fees. For additional information on our scope and methodology in developing these 

estimates, see app.VI. 
Page 11 GAO-02-789 Foreign Patent Challenges

patent for 20 years.11 Actual patent costs for a patent filing strategy similar 

to our scenario could be far higher because we assumed that the patent 

application would not face a difficult examination process in any of the 

countries. Thus, our scenario eliminated many patent office and legal costs 

that companies incur in trying to obtain a patent. Actual patent costs would 

also vary if certain key assumptions were modified. For example, if foreign 

patent protection was desired in more than nine countries, the costs would 

increase. Also, if a patent application was longer or more complex than the 

one in our scenario (25 pages in length), the cost to obtain patent 

protection abroad would rise because translation expenses and some 

foreign patent office charges would be higher. Conversely, if patent 

protection was not maintained for the full 20-year term in each of the 

countries, official fees and attorney fees to maintain the patent would 

decrease.12 The latter condition would reduce the overall cost of foreign 

patent protection relative to the U.S. cost. (App. VI contains more 

information about our scenario.)

11In our scenario, we assumed that the patents would be held for the full 20-year term in 

each country to show what the maximum maintenance costs might be. However, most 

patents are not held for the full term. 

12U.S. patent maintenance costs are fully paid by the end of the twelfth year from the date 

the application was filed, whereas foreign patent maintenance costs continue to be incurred 

through the twentieth year from the date of application. Thus, holding foreign patents for 

shorter periods of time reduces the cost of foreign patent protection relative to U.S. costs. 
Page 12 GAO-02-789 Foreign Patent Challenges

Table 1: Minimum Estimated Costs for a Small Business to Obtain and Maintain U.S. and Foreign Patent Protection for a Single 

Invention

Note 1:The U.S. application is assumed to consist of 25 pages, five drawings, and 15 claims (including 

two independent claims).

Note 2: The patents are assumed to be maintained for 20 years in the United States and the nine other 

countries.

Note 3: U.S. costs are based on USPTO small entity fees and on median attorney costs contained in 

the American Intellectual Property Law Association’s Report of Economic Survey 2001.

Note 4: The foreign application is assumed to be filed under Chapter II of the World Intellectual 

Property Organization’s Patent Cooperation Treaty.

Note 5: Foreign costs are based on USPTO’s PCT fee schedule, Global IP Estimator data on national 

patent office fees and translation costs (Global IP Estimator (Kihei, HI:Global I.P. Net, 2002) is a 

software package that provides cost estimates of international patent applications), and estimates of 

U.S. and foreign attorney fees that we received from four of our patent attorney panelists.

a

Canada, France, Germany, Ireland, Italy, Japan, South Korea, Sweden, and the United Kingdom.

b

Includes USPTO small-entity fees to file, allow (or grant), and maintain a utility patent.

c

Includes U.S. attorney costs to prepare and file the application, issue the allowed patent, and pay U.S. 

maintenance fees.

d

Includes PCT fees; national patent office filing, issuance, and maintenance fees; and translation 

costs.

e

Includes estimates of U.S. and foreign attorney costs to file the PCT application, represent the 

applicant before each national patent office, and pay maintenance fees.

f

U.S. maintenance fees are levied three times during the 20-year patent term, while most foreign 

maintenance fees are levied annually during that period.

Source: GAO analysis.

Resource and Other 

Limitations within Small 

Businesses Can Impede 

Their Efforts to Patent 

Abroad

Nearly 40 percent of the small businesses and 50 percent of the patent 

attorneys believed that certain characteristics of small businesses 

themselves greatly impede these companies’ efforts to obtain foreign 

patents (see fig. 1). Of the items within this category, about 70 percent of 

the businesses and about 90 percent of the attorneys thought that small 

businesses’ limited financial resources relative to the high costs of foreign 

United States Nine other countriesa

Stage of patent costs Official feesb Attorney feesc

Total U.S.

costs Official feesd Attorney feese

Total foreign

costs

Estimated minimum costs to 

obtain patent

$1,010 $5,402 $6,412 $15,517 $<40,000 –

100,000

$<55,517 –

115,517

Estimated minimum costs to 

maintain patent for 20-year 

periodf

$3,000 $528 $3,528 $83,543 $20,000 –

130,000

$103,543 –

213,543

Total estimated minimum 

costs to obtain and 

maintain patent

$4,010 $5,930 $9,940 $99,060 $<60,000 –

230,000

$<159,060 –

329,060
Page 13 GAO-02-789 Foreign Patent Challenges

patents was a great impediment, as shown in figure 3. (Among the 

businesses we surveyed, some had no revenue yet, so they covered their 

foreign patent costs using investor-provided funds. Others allocated 5 

percent or less of their annual revenue to patents.) The two groups’ views 

on other items in this category diverged, and the attorneys regarded 

company characteristics as serious impediments more frequently than the 

small businesses themselves did.
Page 14 GAO-02-789 Foreign Patent Challenges

Figure 3: Small Businesses’ and Patent Attorneys’ Views on Company Characteristics as Impediments to Foreign Patent 

Protection

Note: Percentages reflect the number of respondents rating each item as posing a great or very great 

impediment. Thirty-eight small businesses responded to our survey, and 39 patent attorneys 

participated in our panel. The number of respondents who rated individual items may be lower. See 

appendixes IVand V for the actual number of respondents to each item.

Source: GAO analysis of small business surveys and patent attorney panel questionnaires.

About half of the small businesses and patent attorneys believed that the 

tendency for small businesses not to have overseas operations greatly 

impedes their efforts to patent abroad. The lack of an overseas presence 

can make it difficult to detect patent infringement and take enforcement 

actions in other countries, several attorneys said. In that regard, more than 
Page 15 GAO-02-789 Foreign Patent Challenges

half of the businesses indicated that the fear of losing control over their 

technology through infringement greatly impeded their company’s efforts 

to patent overseas. 

More than half of the patent attorneys believed that limited knowledge 

among small businesses about foreign patents greatly impedes their efforts 

to hold patents overseas. Several patent attorneys said that the various 

foreign laws and systems that regulate patent acquisition and enforcement 

are highly complex and difficult to understand. In addition, small 

businesses may not be aware of the multiple patent-filing processes and 

cost-saving strategies that exist. Unlike large companies, which typically 

employ their own patent attorneys, small businesses often lack internal 

expertise about obtaining and managing foreign patents, several attorneys 

said. As a result, patent attorneys believed that small businesses may be 

highly dependent on outside patent counsel. Unfortunately, they said, 

quality advice about foreign patents is expensive and may not be readily 

available to small businesses. 

About one-third of the businesses we surveyed also believed that limited 

knowledge about foreign patents among small businesses is a great 

impediment. For example, the executive director of a laboratory said that 

his company did not know it would have to obtain patents abroad in order 

to protect its inventions outside of the United States, incorrectly assuming 

that its U.S. patent offered worldwide protection. The company also 

initially believed it would be able to obtain one patent to cover all of 

Europe, which is not possible.13 Moreover, officials from an oil drilling 

products manufacturer said they were surprised to learn that they could 

not file foreign patent applications in English.14 Officials from several 

companies discussed their uncertainty about the various fees and 

processes that other patent offices require. For example, the vice president 

of technology for a ceramic fiber insulation company said that small 

businesses are able to make decisions about where to patent but often do 

13The 1973 European Patent Convention, which created the European Patent Office, 

established a single procedure for granting patents in the 24 member countries on the basis 

of a uniform body of substantive patent law. An application to the European Patent Office is, 

in effect, a group of national patent applications that are processed together, but become 

separate patents that are separately maintained and enforced. In July 2000, the European 

Commission proposed the creation of a single patent that would be legally valid throughout 

the European Union, but member states continue to debate various aspects of the proposal.

14Patent applications can be filed in English in countries where English is a national 

language, such as Canada, Ireland, and the United Kingdom. 
Page 16 GAO-02-789 Foreign Patent Challenges

not understand what costs are involved. He said that his company, which 

had grown to 1,000 employees by the time of our study, could not have 

embarked on its efforts to patent abroad without the help of an outside 

patent attorney. Many of the businesses we contacted also said they rely on 

their outside patent attorney to tell them what they need to know about 

foreign patents.

Differences among Foreign 

Patent Systems Present 

Challenges to Small 

Businesses

About 30 percent of the small businesses and 45 percent of the patent 

attorneys we surveyed regarded differences among foreign patent systems 

as a great impediment for small businesses (see figure 1). Foreign patent 

systems differ from the U.S. system and from each other in many ways, 

including the breadth of protection that their patents afford, the types of 

technology that may be patented, and the national patent offices’ language 

requirements and other procedures. Figure 4 shows the two groups’ views 

on the extent to which items in this category impede small businesses. 

About 40 percent of the small businesses and patent attorneys we surveyed 

similarly regarded differences in the level of patent protection afforded 

among countries as a great impediment. About 60 percent of the patent 

attorneys identified the multiple languages in which foreign patents must 

be processed and the overall lack of harmonization among national patent 

systems as great impediments. 
Page 17 GAO-02-789 Foreign Patent Challenges

Figure 4: Small Businesses’ and Patent Attorneys’ Views on Differences among Foreign Patent Systems as Impediments to 

Foreign Patent Protection

Note: Percentages reflect the number of respondents rating each item as posing a great or very great 

impediment. Thirty-eight small businesses responded to our survey, and 39 patent attorneys 

participated in our panel. The number of respondents who rated individual items may be lower. See 

appendixes IV and V for the actual number of respondents to each item.

Source: GAO analysis of small business surveys and patent attorney panel questionnaires.

The differences among patent laws and systems throughout the world can 

affect small businesses’ ability to obtain foreign patent protection that is 

comparable to their U.S. patent protection, as illustrated in the following 

examples:

• The United States allows patent applicants a 1-year grace period 

between the first public disclosure of an invention and the initial patent 

application date. Many other countries will not award patents if the 

inventor makes a public disclosure before submitting an application. 

Because of this difference, U.S. companies that disclose their inventions 

before applying for a U.S. patent may be ineligible to receive foreign 
Page 18 GAO-02-789 Foreign Patent Challenges

patent protection in certain countries. Many of the patent attorneys 

thought that small businesses were generally not aware of this 

distinction.

• Some technologies or processes that can be protected in the United 

States by a patent, such as business method inventions and certain 

software processes and biotechnological inventions, cannot be similarly 

protected elsewhere. In addition, some countries tend to only allow 

claims (the definitions in the patent application for the invention) that 

are narrower or more restricted than what is typically allowed in the 

United States. As a result, foreign patents may offer different or less 

protection than a corresponding U.S. patent.

• The act of translating patent applications into other languages, as many 

countries require, can degrade the technical content of the application 

and affect the scope of desired protection when translations are 

inaccurate or incomplete. Examination or enforcement problems can 

result.

Another prominent difference concerns the treatment of competing 

applicants. In the United States, when more than one applicant seeks to 

patent the same technology or process, the patent is granted to the 

individual or entity that can demonstrate that it was the first to invent the 

technology or process (commonly referred to as a “first-to-invent” system). 

All other countries, in cases of competing applications for the same 

invention by different inventors, grant the patent to the first inventor to file 

the application for that invention (commonly referred to as a “first-to-file” 

or “first-inventor-to-file” system).

The overall lack of harmonization among the world’s patent systems also 

increases the difficulty and expense of obtaining foreign patent protection 

for small businesses, according to our patent attorney panelists. This lack 

of harmonization not only creates a need for expertise about the various 

laws and systems among those who wish to patent abroad, but it also 

creates repetitive requirements, such as multiple prior art searches and 

application examinations. Officials from several of the small businesses we 

surveyed said that they have neither the time nor the ability to develop the 

expertise needed to understand and navigate foreign patent systems. As a 

result, small businesses must often turn to outside experts. This increases 

their costs, according to the president of a conveyor belt manufacturer we 

interviewed. Officials from several of the businesses we surveyed 

expressed a desire for more uniformity among foreign patent laws and 
Page 19 GAO-02-789 Foreign Patent Challenges

systems or, ideally, a single patent that would be recognized throughout the 

world.

Business Climate and Lack 

of Enforcement in Some 

Countries Also Present 

Challenges

About 30 percent of the small businesses and 40 percent of the patent 

attorneys we surveyed regarded individual country characteristics, such as 

business climates, aspects of countries’ legal and patent systems, and 

cultural or language differences, as great impediments for small 

businesses’ efforts to obtain foreign patents (see fig. 1). Of the items within 

this category (see fig. 5), the most significant impediment, according to the 

small businesses, was other countries’ market and business climates (63 

percent viewed this as a great impediment). The most significant 

impediment, according to the patent attorneys, was inadequate or difficult 

patent enforcement in other countries (72 percent viewed this as a great 

impediment). The attorneys regarded more items within this category as 

serious impediments than the small businesses did. 
Page 20 GAO-02-789 Foreign Patent Challenges

Figure 5: Small Businesses’ and Patent Attorneys’ Views on Individual Country Characteristics as Impediments to Foreign 

Patent Protection

Note: Percentages reflect the number of respondents rating each item as posing a great or very great 

impediment. Thirty-eight small businesses responded to our survey, and 39 patent attorneys 

participated in our panel. The number of respondents who rated individual items may be lower. See 

appendixes IV and V for the actual number of respondents to each item.

Source: GAO analysis of small business surveys and patent attorney panel questionnaires. 
Page 21 GAO-02-789 Foreign Patent Challenges

The patent attorneys described several enforcement issues that may 

impede small businesses from seeking foreign patent protection in certain 

countries. For example, they said enforcing patents in some countries is 

difficult, because the countries have weak or nonexistent patent 

enforcement laws. In addition, the attorneys said that some countries have 

acceptable patent enforcement laws, but the enforcement process is slow 

and ineffective. Finally, the attorneys noted that the remedies available in 

some countries (such as injunctions to stop infringement or damages to 

compensate a company for its losses) differ from what is available in the 

United States and may not be sufficient to counteract the effects of any 

patent infringement. Ineffective enforcement and limited remedies can be 

found in developed as well as developing countries, the attorneys said.

Impediments 

Negatively Affect Small 

Businesses’ Foreign 

Patent Decisions

The many impediments small businesses face have a negative impact on 

their foreign patent decisions. Many of the businesses we surveyed said 

that the impediments they encounter have discouraged or prevented them 

from obtaining as much foreign patent protection as they would like to 

have. A majority of the patent attorneys reinforced this view, saying that 

most small businesses hold fewer foreign patents than they need, primarily 

because the impediments are too difficult for them to overcome. While 

large and small businesses generally face the same impediments, according 

to the attorneys, large businesses are better equipped to deal with foreign 

patent impediments because they have more financial resources and 

foreign patent expertise and are better able to enforce their patents abroad.

Impediments Cause Small 

Businesses to Limit the 

Number of Foreign Patents 

They Hold

According to some of the small businesses we surveyed, the high cost of 

foreign patents has caused them to limit the number of countries in which, 

or the number of products for which, they seek foreign patent protection. 

For example, the chief executive officer of a company that develops 

motion control technology, the president of a window shade manufacturer, 

and the president of an aquaculture supply company told us that their firms 

have avoided or stopped obtaining patents in certain Asian and European 

countries with potentially important markets for their products because of 

high costs and concerns about enforcement. Several businesses said that, 

in an attempt to manage their foreign patent costs, they had abandoned 

patent applications before the patent was granted or let certain foreign 

patents expire. Many of the businesses identified countries where they 

would like to hold foreign patents for marketing purposes or said that they 

generally would prefer to have broader foreign patent protection.
Page 22 GAO-02-789 Foreign Patent Challenges

The challenges of patent enforcement also affected the businesses’ foreign 

patent decisions. Some companies do not hold patents in countries where, 

according to their patent attorneys, enforcement is costly or difficult, such 

as China, Japan, South Korea, and Taiwan. The vice president for research 

and development at a company that makes rechargeable batteries and 

power packs told us that his company’s products would probably be highly 

marketable in certain Asian countries. However, his company is not 

pursuing China, Taiwan, or South Korea as markets because of 

enforcement concerns. The window shade manufacturer encountered 

patent infringement in South Korea but decided not to enforce its patent 

because of the high cost of pursuing an enforcement case. Instead, 

according to the company’s president, it backed out of the market.

The decision to limit their foreign patent protection has affected some 

businesses’ ability to develop foreign sales. For example, two businesses 

told us that the lack of foreign patent protection in certain countries caused 

them to lose markets to their competitors. In one instance, competitors 

used the company’s unprotected technology to develop the market. 

Another business told us that it stops developing products for market when 

it cannot get the foreign patent protection it needs.

The patent attorneys also recognized that impediments affect small 

businesses’ foreign patent decisions. More than half of the attorneys on our 

panel said that most small businesses hold fewer foreign patents than they 

need (as shown in fig. 6), primarily because the impediments they face are 

too difficult to overcome. Most of the businesses we surveyed held 1-10 

foreign patents, but some held more (see figure 14 in appendix II). 
Page 23 GAO-02-789 Foreign Patent Challenges

Figure 6: Patent Attorneys’ Views on Small Businesses’ Level of Foreign Patent 

Protection

Legend

N = 36

Note: Percentage may not add to 100 due to rounding.

Source: GAO analysis of patent attorney panel questionnaires.

However, some of the patent attorneys believed that small businesses hold 

more foreign patents than they need. Small businesses that patent abroad 

should carefully select the countries in which they will file applications and 

not apply in more countries than necessary, the attorneys said. Further, 

some attorneys said that these businesses should consider whether the 

funds they allocate to foreign patents could be put to better use, such as 

funding additional research and development or acquiring more U.S. 

patents. Finally, several attorneys advised that foreign patents might not be 

appropriate for all small businesses. 
Page 24 GAO-02-789 Foreign Patent Challenges

Impediments Affect Small 

Businesses More Negatively 

Than Large Businesses

A majority of the patent attorneys believed that impediments to acquiring 

foreign patents have a more negative impact on small businesses than on 

large ones. Fifty-eight percent of the attorneys said that small businesses 

generally face the same impediments as large ones, but are affected 

differently, as shown in figure 7. All of the attorneys who held this view 

believed that small businesses are affected more negatively by the 

impediments than large businesses. Among the reasons that the attorneys 

cited for the difference in effect were that large businesses (1) have more 

resources with which to pay foreign patent costs and to understand foreign 

patent laws and systems, (2) are more likely to have overseas operations 

that allow them to market their products and monitor their patents, and (3) 

are better equipped to enforce their patents.

Figure 7: Patent Attorneys’ Views on the Differences in Impediments That Large and 

Small Businesses Face

Legend

N = 36

Source: GAO analysis of patent attorney panel questionnaires.
Page 25 GAO-02-789 Foreign Patent Challenges

Several Federal 

Actions Could Help 

Small Businesses 

Overcome 

Impediments

Both the small businesses and the patent attorney panel viewed federal 

efforts to further promote international patent harmonization and cost 

reduction as the most promising way to help small businesses overcome 

the impediments they face to obtaining foreign patents. Among other 

possible federal actions that we asked them to rate, both groups also 

believed that informing and educating Congress about the need for patent 

harmonization would be very useful. However, the small businesses and the 

patent attorneys held different views about other possible federal actions. 

For example, 68 percent of the businesses believed that providing federal 

financial assistance to small businesses to address the high costs of foreign 

patents would greatly help them obtain such patents, whereas only 48 

percent of the patent attorneys held this view. Conversely, 67 percent of the 

attorneys thought that providing information and education to small 

businesses about foreign patents would be useful, but only 39 percent of 

the businesses found value in having such information. No federal 

programs currently exist to provide this type of information to small 

businesses.

Federal Efforts to Promote 

Patent Harmonization Could 

Reduce Foreign Patent 

Costs and Complexity

We asked the small businesses and patent attorneys whether the federal 

government should take any actions to help small businesses overcome the 

foreign patent impediments they face. (We asked the businesses about the 

extent to which certain federal actions would help their company’s efforts 

to patent abroad, and we asked the patent attorneys to what extent certain 

federal actions would be useful and feasible.) As shown in figure 8, about 

70 percent of the businesses and about 90 percent of the attorneys rated 

legislation or other government activity to promote international patent 

harmonization and international patent cost reduction as the most helpful 

or useful actions that the federal government could take.
Page 26 GAO-02-789 Foreign Patent Challenges

Figure 8: Small Businesses’ and Patent Attorneys’ Views about Possible Federal Actions to Overcome Foreign Patent 

Impediments

Note: Percentages reflect (1) the number of small businesses that rated federal actions as likely to help 

their foreign patent efforts to a great or very great extent and (2) the number of patent attorneys who 

rated federal actions as a mostly useful or extremely useful way to help small businesses patent 

abroad. Thirty-eight small businesses responded to our survey, and 39 patent attorneys participated in 

our panel. The number of respondents who rated individual items may be lower. See appendixes IV 

and V for the actual number of respondents to each item.

Source: GAO analysis of small business surveys and patent attorney panel questionnaires.
Page 27 GAO-02-789 Foreign Patent Challenges

While patent harmonization efforts have been ongoing for several decades, 

WIPO member countries began two specific initiatives in recent years. 

First, WIPO members started negotiations in 1995 to streamline and 

harmonize national and regional patent office requirements related to filing 

patent applications and maintaining patents. As a result of this effort, WIPO 

members adopted the Patent Law Treaty in June 2000. However, this treaty 

is not yet in force. The treaty will simplify the requirements for obtaining a 

filing date; harmonize the information that national patent offices can 

require to be provided on patent applications, both in form and content; 

and provide additional time for filing translations, among other things. 

These changes are expected to result in easier access to worldwide patent 

protection and some cost savings for applicants. The United States has 

signed the treaty, but has not yet presented it to Congress for ratification. 

The treaty will not enter into force until at least 10 WIPO member countries 

have ratified it. Only 3 have ratified it to date, according to USPTO officials.

Despite these developments, however, many substantive differences 

among countries’ patent laws remain. WIPO member countries undertook a 

second initiative in 2000 to try to harmonize these differences. According to 

USPTO officials, substantive patent law harmonization could produce 

many advantages. For example, the United States would like other 

countries to offer patent protection for certain technologies, such as 

certain software processes and biotechnological inventions, that can 

currently only be patented in the United States and certain other countries. 

In addition, if countries adopted more uniform standards and approaches 

for examining and granting patents, then national patent offices could 

begin to accept the results of each other’s prior art searches and 

examinations. Such a development would not only reduce the patent 

offices’ workloads, it could also produce time and cost savings for patent 

applicants. 

Despite the potential benefits, however, prior attempts to achieve 

substantive patent law harmonization were not successful. For example, 

negotiations that began in the 1980s ended in 1991 because divergent views 

on major issues could not be resolved. In particular, the United States was 

not willing to change its first-to-invent system or give up its grace period. 

Much debate has occurred on the advantages and disadvantages of the 

first-to-invent and first-to-file systems. Supporters of the first-to-invent 

system argue that first-to-file systems encourage a “race to the patent 

office” among patent applicants that disadvantages those with fewer 

resources, such as some small businesses. However, some patent experts 

maintain that small entities, which they say can act more quickly than large 
Page 28 GAO-02-789 Foreign Patent Challenges

businesses, can readily secure patent rights in a first-to-file system.15

Supporters of first-to-file systems believe they are simpler and more 

efficient. According to USPTO officials, because these negotiations will 

address many controversial issues, they should be regarded as a long-term 

effort. Therefore, they said, the United States may want to consider other 

ways of making progress on patent law harmonization. They also said that 

shorter-term efforts to help small businesses may need to be considered.

Financial Assistance Could 

Help, but Many Concerns 

Exist 

Nearly 70 percent of the businesses indicated that federal financial 

assistance would greatly help their company’s efforts to obtain foreign 

patent protection. However, several businesses and most of the patent 

attorneys expressed concerns about the appropriateness of such 

assistance. In particular, they questioned the basis on which such 

assistance would be awarded and stated that financial assistance is an 

indirect solution to the underlying causes of foreign patent costs. 

There was no consensus among the small businesses about what type of 

federal financial assistance would be most useful. They made various 

suggestions, including government loans, grants, or tax credits, or 

modifying existing federal programs that fund research costs. Several 

businesses believed that receiving federal loans or grants would help them 

file for more patents abroad or maintain foreign patents for a longer period. 

While several businesses stated that they were not aware of any federal 

loans that could be used to cover foreign patent costs, Small Business 

Administration officials told us that loans obtained through their 

ExportExpress program could be used for this purpose.16 Some businesses 

said that tax credits for foreign patent costs would enable them to devote 

more of their own resources to this activity. Others noted that tax credits 

are not useful to companies that are still in the product development phase 

15Supporters maintain, for example, that small entities can easily and cheaply secure their 

rights to their inventions by filing “provisional applications” with USPTO, an option USPTO 

began offering in 1995. Provisional applications can contain less information about the 

invention than standard patent applications, are not examined for their merits, and allow the 

applicant 1 year to submit a more complete application. The small entity fee to file such an 

application is $80, compared with $370 to file a standard patent application.

16The ExportExpress loan is designed to help small businesses obtain adequate export 

financing. Recipients can use its proceeds for a wide range of activities or purposes. Small 

businesses apply with participating lenders, and SBA guarantees the lenders 85 percent of 

the loan up to a maximum of $150,000, making it easier for small businesses to obtain the 

financing.
Page 29 GAO-02-789 Foreign Patent Challenges

and thus have little or no revenue. Finally, several businesses that had 

received funding to cover their research under the Small Business 

Innovation Research Program said that allowing companies to use these 

funds to cover foreign patent costs would help.

However, a number of company officials expressed concerns about the 

appropriateness or usefulness of federal financial assistance. For example, 

several company officials said that federal financial assistance might 

inappropriately encourage companies that should not seek foreign patent 

protection to do so. One official said that foreign patent costs are an 

appropriate market barrier, because only companies with good business 

sense are able to afford them. Another said that companies with valuable 

ideas will figure out how to pay the costs to protect their ideas. Several 

company officials that had applied for or obtained federal funding for 

technology development in the past also expressed concerns that federal 

funding programs usually entail burdensome paperwork requirements. 

Finally, some company officials expressed misgivings about a federal 

program that might increase their taxes. 

Many of the patent attorneys also had concerns about the idea of providing 

federal financial assistance to small businesses for foreign patent costs. 

Slightly more patent attorneys doubted the usefulness of such assistance, 

as shown in figure 9, and 70 percent of them thought that financial 

assistance would not be feasible. In explaining their views, 92 percent of 

the attorneys said that financial assistance would be an indirect solution to 

the larger problem of lack of patent law harmonization and the high costs 

that result. One of the attorneys opposed federal financial assistance for 

foreign patents because such assistance would support the current cost 

structure and be, in effect, a transfer of U.S. taxpayer funds to foreign 

governments. About half of the attorneys said that financial assistance for 

foreign patents would be an inappropriate or inefficient use of government 

funds. Several attorneys questioned how the government would decide 

which inventions to support. About half of the attorneys also said federal 

financial assistance would not likely be significant enough to help small 

businesses overcome their cost-related impediments. 
Page 30 GAO-02-789 Foreign Patent Challenges

Figure 9: Patent Attorneys’ Views on the Usefulness and Feasibility of Federal Financial Assistance for Reducing Foreign Patent

Costs

Note: Percentages reflect the number of patent attorneys who provided the indicated answers. Thirtytwo of the 39 patent attorney panelists participated in this phase of the panel. The number of 

respondents who rated individual items may be lower. See appendix IV for the actual number of 

respondents to each item.

Source: GAO analysis of patent attorney panel questionnaires.

Patent Attorneys Thought 

That Information and 

Education for Small 

Businesses Could Help 

Their Efforts to Patent 

Abroad

Nearly 60 percent of the patent attorneys believed that small businesses 

lack sufficient knowledge about foreign patents (see figure 3). Many of the 

attorneys stated that small businesses often make poor decisions about 

foreign patents, in part because they do not understand the differences 

between U.S. and foreign patent laws and standards. In particular, they do 

not understand how disclosing information about an invention prior to 

filing a foreign application may cause them to lose foreign patent rights. 

Many attorneys also believed that because small businesses lack 

information and knowledge about foreign patents, they (1) fail to assess a 

broad range of factors that the attorneys felt should be considered when 

making foreign patent decisions, (2) do not thoroughly weigh foreign 

patent costs against potential benefits, and (3) do not develop a good 

business plan for their foreign patents.

Nearly 70 percent of the patent attorneys thought that taking steps to 

inform and educate small businesses about foreign patents would be a 

useful federal action (see fig. 8). About 60 percent of them also believed 
Page 31 GAO-02-789 Foreign Patent Challenges

that doing so would be extremely feasible. We asked the attorneys to rate 

seven types of information that they thought might be useful; their 

responses are shown in figure 10. One of the attorneys suggested that we 

should make the information that we obtained from the patent attorney 

panel available to small businesses.17 These various types of information, 

the attorneys said, would help small businesses become better educated 

about foreign patents and improve their foreign patent decisions. (See table 

5, app. IV, for a list of things that the patent attorneys believed small 

businesses could do better as they seek to hold foreign patents.) About 40 

percent of the businesses also thought that additional information would 

help their company’s efforts to patent overseas. (There were no discernable 

similarities among the businesses that held this view—they operated in 

various industries, ranged in size from 1 to 600 employees, and most held 1-

10 foreign patents.)

17A GAO report on the factors that small businesses should consider when making foreign 

patent decisions and on other advice that the attorneys provided is forthcoming. 
Page 32 GAO-02-789 Foreign Patent Challenges

Figure 10: Patent Attorneys’ Views on Usefulness of Information That Federal Government Could Provide to Small Businesses

Note: Percentages reflect the number of patent attorneys who rated items as mostly useful or 

extremely useful ways to help small businesses patent abroad. Thirty-nine patent attorneys 

participated in our panel. The number of respondents who rated individual items may be lower. See 

appendix IV for the actual number of respondents to each item.

Source: GAO analysis of patent attorney panel questionnaires.

Upon being provided with the preliminary results of our study, SBA and 

USPTO officials said that it would be feasible and fairly easy to make 

information about foreign patents available to small businesses. Both 

agencies have Internet sites where they could post such information, the 

officials said, along with links to other information about foreign patents. 

Conclusions Seeking and obtaining foreign patents is an important, and sometimes 

necessary, strategic action for most of the small businesses we surveyed. 

However, few of them were fully satisfied with the extent of foreign patent 

protection they have acquired, and most would hold more foreign patents if 

doing so were less expensive and less complicated. The existence of 

multiple and varied foreign patent laws and systems is a major contributor 

to both the expense and complexity of obtaining foreign patents. Reducing 

foreign patent costs and simplifying the processes for obtaining them are 

the primary reasons that WIPO member countries have engaged in efforts 
Page 33 GAO-02-789 Foreign Patent Challenges

to harmonize their patent laws and systems. WIPO’s Patent Law Treaty is 

an important step toward reaching that goal and, once ratified, should 

benefit small businesses that need foreign patent protection. The 

completion of current or future negotiations to address the remaining 

substantive differences among countries’ patent laws could produce 

substantial additional benefits for small businesses seeking to patent 

abroad. However, these negotiations are a long-term effort, and their 

success is uncertain. 

The groups we surveyed supported other steps that would also address the 

expense and complexity of obtaining foreign patents, including federal 

financial assistance and information programs. While financial assistance 

might help some companies’ efforts to patent abroad, survey respondents 

raised many concerns about its appropriateness as a policy measure. 

Developing information about other countries’ patent laws, foreign patents 

costs and strategies for managing these assets could also help small 

businesses, the surveys disclosed. Such information could make the 

process less complex, particularly for those businesses that are beginning 

to consider whether foreign patents are appropriate for their operations. 

Unlike other possible federal actions, the government could establish 

information programs at low cost and with relative ease. These programs 

would provide immediate assistance to small businesses seeking to patent 

abroad.

Recommendation for 

Executive Action

In order to address the impediments that small businesses face in obtaining 

foreign patents, we recommend that the Director of the U.S. Patent and 

Trademark Office obtain input from small businesses, experts in global 

patent issues, and other interested parties in order to assess the advantages 

and disadvantages of various options for achieving additional patent law 

harmonization.

In addition, we recommend that the Administrator of the Small Business 

Administration, with assistance from the Director of the U.S. Patent and 

Trademark Office, collect and make available information about key 

aspects of foreign patent laws, requirements, procedures, and costs that 

would be useful to small businesses that are considering whether to obtain 

foreign patent protection.
Page 34 GAO-02-789 Foreign Patent Challenges

Agency Comments and 

Our Response

We requested comments on a draft of this report from the U.S. Patent and 

Trademark Office and the Small Business Administration. USPTO and the 

SBA provided written comments, which are reprinted in appendixes VII 

and VIII. USPTO also provided technical comments, which we 

incorporated as appropriate. In their comments, both agencies recognized 

the important roles of small businesses as innovators and contributors to 

the U.S. economy. 

USPTO did not either agree or disagree with either of our 

recommendations, but instead provided suggestions that slightly modified 

the scope and intent of the recommendations. For example, USPTO 

suggested that the first recommendation should be modified to recommend 

that USPTO “continue to consider” the advantages and disadvantages of 

various harmonization options based on input from small businesses and 

others. While we recognize that USPTO has obtained some input from 

small businesses about patent law harmonization, most of this input has 

been in the form of responses to federal register requests for comment 

from the public. We have retained our recommendation as written because 

we believe that USPTO needs to be more active in obtaining input about 

harmonization from small businesses. USPTO’s suggestions for the second 

recommendation indicated that it was not comfortable helping to develop 

original, specific information about foreign patent laws, requirements, 

procedures, and costs. We agreed with SBA’s concerns and modified the 

recommendation to direct the agencies to collect and make available 

existing information.

SBA said it would be pleased to disseminate information about foreign 

patent protection to small businesses, but lacked the expertise to develop 

this information. We agreed with SBA’s concern, which is similar to 

USPTO’s concern, and modified the recommendation.

As agreed with your office, unless you publicly announce its contents 

earlier, we plan no further distribution of this report until 30 days after its 

date. At that time, we will send copies of this report to the Chairman of the 

Senate Small Business and Entrepreneurship Committee, the Ranking 

Minority Member of the House Committee on Small Business, and other 

interested congressional parties; the Administrator of the Small Business 

Administration; and the Director of the U. S. Patent and Trademark Office. 

Copies will be made available to other interested parties upon request. In 
Page 35 GAO-02-789 Foreign Patent Challenges

addition, the report will be available at no charge on the GAO Web site at 

http://www.gao.gov.

If you or your staff have any questions concerning this report, please call 

me at (202) 512-4346. Additional GAO contacts and staff acknowledgments 

are listed in appendix IX.

Loren Yager, Director

International Affairs and Trade
Page 36 GAO-02-789 Foreign Patent Challenges

Appendix I

Objectives, Scope, and Methodology AAppenednxidexiIs

The Ranking Member of the Senate Committee on Small Business and 

Entrepreneurship and the Chairman of the House Committee on Small 

Business asked us to analyze (1) whether small businesses face 

impediments in obtaining foreign patent protection, (2) what impact any 

impediments have on their foreign patent decisions, and (3) whether any 

federal actions could help small businesses overcome the impediments 

they may face in obtaining foreign patents. We collected information on 

these objectives in two ways. First, we identified and solicited information 

on each objective from a panel of 39 U.S. patent attorneys with expertise in 

obtaining foreign patents. Second, we surveyed a small sample of small 

businesses that had obtained or had considered obtaining foreign patent 

protection in the last few years, asking them to provide information on 

each of our three objectives. We formulated the questions in our small 

business survey based on the information we obtained from the patent 

attorney panel. In our analysis, we took into account the possibility that 

some of the information we collected might reflect self-interest on the part 

of the patent attorneys and small businesses.

The Expert Panel To identify potential panelists with recognized expertise in obtaining 

foreign patents, we invited recommendations from participants at 

intellectual property conferences we attended in 2001. We also sought 

recommendations from officials of several intellectual property 

organizations, including the American Intellectual Property Law 

Association, the Intellectual Property Owners Association, and the 

Intellectual Property Committee of the American Bar Association, as well 

as from former high-level U.S. Patent and Trademark Office (USPTO) 

officials. We contacted 55 of these potential panelists to ascertain their 

areas of professional expertise. 

We selected our panelists using predetermined criteria, which included the 

(1) number of times that we received recommendations about individuals, 

(2) number of years of experience they had in obtaining foreign patents, (3) 

extent of their experience in filing patent applications on behalf of small 

businesses, (4) evidence of their having published articles in professional 

journals or having made presentations at intellectual property-related 

conferences, and (5) evidence of their having chaired committees of 

professional intellectual property associations. In addition to these criteria, 

we made sure that our final panel included representative patent attorneys 

from (1) major industries where patenting in the United States is important, 

(2) major geographic regions of the United States, (3) law firms where they 

were “in-house” counsel (that is, patent attorneys who were employed 
Appendix I

Objectives, Scope, and Methodology

Page 37 GAO-02-789 Foreign Patent Challenges

directly by a company) or “outside” counsel (patent attorneys who advised 

one or more clients), and (4) law firms that specialize in intellectual 

property as well as general practice law firms that offer intellectual 

property services.

After applying these criteria, we invited 39 patent attorneys to be on our 

expert panel. All accepted. At the time they were invited to be members of 

our panel, about 46 percent of the panelists were in-house counsel for large 

or small companies, while about 54 percent were outside counsel. Nearly 

90 percent of the attorneys on our panel had experience advising small 

businesses about patent issues. The combined expertise of the attorneys on 

our panel covered a broad spectrum of technologies, including electrical, 

mechanical, chemical, pharmaceutical, biotechnology, semiconductors and 

computers, consumer products, medical products, manufacturing, and oil.

We obtained the patent attorneys’ views through an iterative Web-based 

panel that consisted of three phases (the results are contained in app. IV). 

All 39 attorneys participated in the first phase, in which we posed openended questions. In the second phase, 36 attorneys (92 percent) responded 

to a close-ended questionnaire that we developed from the patent 

attorneys’ responses in the first phases. For the third phase, 32 attorneys 

(82 percent) expanded upon particular issues that arose in the second 

phase. 

The First Phase In the first phase of the expert panel, which ran from July 19 to August 28, 

2001, we asked the attorneys to respond to seven open-ended questions 

about broad issues concerning foreign patents and small businesses. We 

developed these questions from the findings of prominent studies on patent 

issues that we reviewed and from interviews we held with several U.S. 

patent attorneys and small businesses. Specifically, we asked the attorneys 

about

• factors that businesses should consider in deciding whether or not to 

seek, obtain, and maintain foreign patent protection;

• impediments that businesses face in seeking, obtaining, and maintaining 

foreign patent protection; 

• possible differences in impediments between small and large 

businesses; 
Appendix I

Objectives, Scope, and Methodology

Page 38 GAO-02-789 Foreign Patent Challenges

• likely missteps that small businesses might typically make in seeking, 

obtaining, and maintaining foreign patent protection; 

• the likelihood that small businesses are generally seeking, obtaining, 

and maintaining an amount of foreign patent protection that is 

appropriate for their business needs and plans;

• possible things that small businesses could do better when they 

consider whether to seek, obtain, and maintain foreign patent 

protection; and

• whether any public assistance (for example, grants, technical 

assistance, and so on) or legislation should be introduced to help small 

businesses overcome any foreign patenting challenges.

We pretested the questions for the first survey phase with three of the 

panelists to ensure that the questionnaire (1) was clear and unambiguous 

and that the terms we used were precise, (2) did not place an undue burden 

on individuals completing it, and (3) was independent and unbiased. 

We performed a content analysis of the first phase that identified major 

themes within each question and grouped the themes into several 

categories. To maintain standards of methodological integrity, two coders 

independently performed the content analysis and then met to reconcile 

differences. Any issues that the two original coders could not reconcile 

were referred to other independent coders for a final determination. After 

analyzing questions for the first survey phase, we crafted close-ended 

questions for the second phase.

The Second Phase In the second phase, which ran from November 5 to 26, 2001, we asked the 

panelists to respond to about 40 close-ended questions that contained over 

125 specific items.The purpose of the second phase was to provide the 

panelists with the opportunity to consider the other panelists’ responses to 

the first phase and to respond in a structured, quantifiable way. The 

questions for the second phase covered most, but not all, of the questions 

from the first phase. In a few cases, we found the responses to two 

questions covered similar themes, and in another case, we found that we 

could use the responses without asking the questions during a second 

phase. 
Appendix I

Objectives, Scope, and Methodology

Page 39 GAO-02-789 Foreign Patent Challenges

For the second phase, we framed very detailed questions on the attorneys’ 

responses to impediments to patenting overseas (question 2 from the first 

phase), things small businesses could do better (question 6 from the first 

phase), and possible public assistance and legislation (question 7 from the 

first phase). For these questions, we presented the panelists with lists of 

themes grouped into categories. We asked the panelists to rank these items 

on five-point scales according to dimensions such as the items’ importance 

and feasibility. To obtain reactions to the first phase’s question on 

differences between large and small businesses (question 3 from the first 

phase), and the degree of patent protection that these businesses received 

(question 5 from the first phase), we crafted a few close-ended questions 

that encapsulated the major issues that the panelists raised. We pretested 

the questions for the second phase with two of the panelists, using the 

same methods as those we employed for the first phase.

The Third Phase In the third phase, which ran from January 14 to February 8, 2002, we asked 

the panelists to expand on their views about the usefulness and feasibility 

of federal financial assistance to specifically address the cost-related 

impediments that small businesses face. We presented the panelists with 

statistical results from the second phase and noted that while the panelists 

viewed cost-related impediments as the most significant barriers that small 

businesses face, they also viewed financial assistance as the least useful of 

the federal assistance actions that they rated. We posed three close-ended 

questions to better understand the panelists’ views about financial 

assistance. We also posed one open-ended question asking the panelists to 

discuss how, in the absence of federal financial assistance, small 

businesses could address the cost-related impediments that they face. We 

did not pretest the third-phase questions. 

In this report, we present (1) the results of the close-ended questions from 

the second and third patent attorney survey phases and (2) illustrative 

examples taken from their responses to the open-ended questions in the 

first survey phase.

The Small Business 

Survey

To answer our three report objectives, we also conducted a survey of small 

U.S. businesses. Because we wanted to understand how small businesses 

make decisions about whether or not to obtain foreign patents and to gain 

their views on our study objectives, we surveyed businesses that had 
Appendix I

Objectives, Scope, and Methodology

Page 40 GAO-02-789 Foreign Patent Challenges

patented inventions in the United States and had also obtained or 

considered obtaining foreign patents.

There is no database of U.S. small businesses that have obtained patents 

overseas. To help us identify and enumerate these businesses, USPTO 

provided us with a database of issued U.S. patents for which applications 

were filed in 1997 by applicants that claimed small entity status. We chose 

1997 as the application year in order to maximize the possibility that the set 

of small businesses had applied for and received foreign patents based on 

their U.S. patents by the time of our study.18

While this database contained reliable information on patents issued in the 

United States, USPTO officials reported, it had major limitations as a frame 

from which we could draw a representative sample of small U.S. 

businesses that had patented overseas. In particular, the officials noted 

major limitations as to whether the database contained only small 

businesses, whether the businesses were U.S. owned, and whether the 

businesses had an interest in obtaining patents overseas.

Consequently, in order to survey small U.S. businesses that had patented 

overseas, we were required to locate and screen all the patent owners in 

the USPTO’s database. We had to screen the patents owners to find out if 

they were (1) small businesses, (2) U.S. companies, and (3) interested in 

patenting overseas. As there were more than 10,000 patents issued to 

applicants identifying themselves as small businesses in the 1997 database, 

we realized that it would be impractical to conduct a large, generalizable 

survey of the entire database. Instead, we decided to conduct a small, 

randomly selected sample of small businesses that had obtained or 

considered obtaining overseas patents in the last few years. 

Our initial goal was to survey a minimum of 30 companies. Because the 

importance of patents varies by industries, we wanted to ensure that we 

contacted small businesses from a broad range of major industries. 

Therefore, we selected from the USPTO database a random sample of 600 

18Under the 1883 Convention for the Protection of Industrial Property (Paris Convention), as 

amended, patent applicants must file foreign patent applications within 1 year of the date on 

which they filed their domestic applications. In 2000, the average pendency period for 

patent applications filed with USPTO was 25 months from the time of application, while the 

average pendency period for applications filed with the European Patent Office was 73 

months from the time of application. Similar statistics for Japan, another major patent 

jurisdiction, were not available.
Appendix I

Objectives, Scope, and Methodology

Page 41 GAO-02-789 Foreign Patent Challenges

companies stratified equally across the six USPTO technology centers that 

existed in 1997.19 USPTO officials explained to us that they assign patents 

for examination according to the invention’s area of technology and that 

choosing sample patents from within each technology center would be a 

reasonable way to get a broad array of companies and industries. Our 

selection method ensured that we gave equal weight to all six technology 

centers.

We screened our sample and removed entities that appeared to be foreign 

companies or universities. Working sequentially through our randomly 

sorted, stratified list of companies, we conducted Web searches on 278 

businesses to locate information about them. The distribution across the 

technology centers of these 278 businesses we researched is shown in table 

2, row 1. We stopped conducting Web searches when we had found contact 

information for at least 25 businesses in each technology center, as shown 

in row 2, at which point we had a total of 156 businesses.

19In fiscal year 1997, USPTO’s technology centers and codes were the following:1600 – 

Biotechnology, Organic Chemistry & Designs; 1700 – Chemical and Material Engineering; 

2700 – Communications and Information Processing; 2800 – Physics, Optics, System 

Components & Electrical Engineering; 3600 – Transportation, Construction & Agriculture; 

and 3700 – Mechanical Engineering, Manufacturing & Products. In fiscal year 2001, the 2700 

technology center was split into two groups: 2100 – Computer Architecture, Software & 

Electronic Commerce; and 2600 – Communications. 
Appendix I

Objectives, Scope, and Methodology

Page 42 GAO-02-789 Foreign Patent Challenges

Table 2: Statistics on the Number of Small Businesses Screened and Selected for GAO’s Survey

Legend

1600 = Biotechnology, Organic Chemistry & Designs

1700 = Chemical and Material Engineering

2700 = Communications and Information Processing

2800 = Physics, Optics, System Components & Electrical Engineering

3600 = Transportation, Construction & Agriculture

3700 = Mechanical Engineering, Manufacturing & Products

Note: We pretested our survey with 2 of the 62 businesses but did not include these responses in our 

survey results. We modified the survey and pretested with a third business, whose responses we 

included in the survey results.

Source: GAO small business survey.

We conducted telephone screening interviews with the 156 businesses for 

which we found contact information. In these interviews, we asked the 

businesses what their current size was based on the number of their 

employees, whether they had obtained or considered obtaining foreign 

patents, and whether they would be willing to participate in our survey. Of 

the businesses we contacted, 80 met our criteria and agreed to participate 

in our survey, as shown in table 2, row 3. Of these, 18 businesses said that 

they did not have an interest in obtaining foreign patents, primarily because 

the U.S. market sufficiently met their needs or there were no foreign 

markets for their products. We decided not to include these businesses in 

our survey. 

USPTO Technology Center code

Type of business 1600 1700 2700 2800 3600 3700 Total

1. Businesses for which GAO 

conducted Web search

 45 42 45 41 49 56 278

2. Businesses for which GAO found 

contact information

 25 26 25 27 26 27 156

3. Businesses that met criteria for 

the survey and agreed to participate 

in the survey

15 15 17 10 14 9 80

a. Businesses with no interest in 

obtaining foreign patents

1172 43 18

b. Businesses with an interest in 

obtaining foreign patents that GAO 

surveyed or asked to pretest 

survey

14 14 10 8 10 6 62

4. Businesses that responded to our 

survey

8 11 4 6 5 4 38
Appendix I

Objectives, Scope, and Methodology

Page 43 GAO-02-789 Foreign Patent Challenges

Sixty-two businesses said that they did have an interest in obtaining foreign 

patents. Of these, 46 said they had done so, and 16 said they had considered 

obtaining foreign patents (see table 3). 

Table 3: Foreign Patent Experience of the Small Businesses That GAO Surveyed

Legend

1600 = Biotechnology, Organic Chemistry & Designs

1700 = Chemical and Material Engineering

2700 = Communications and Information Processing

2800 = Physics, Optics, System Components & Electrical Engineering

3600 = Transportation, Construction & Agriculture

3700 = Mechanical Engineering, Manufacturing & Products

Note: We pretested our survey with 2 of the 62 businesses but did not include their responses in our 

survey results. We modified the survey and pretested with a third business, whose responses we 

included in the survey results.

Source: GAO small business survey.

We developed the small business survey based on the patent attorneys’ 

responses to the second phase of the patent attorney panel survey. We 

asked the businesses to rate the extent to which, in making their decisions 

about foreign patents, they considered 13 broad categories of factors and 

faced 32 broad categories of impediments. We also asked them to indicate 

the extent to which nine types of possible federal assistance options would 

help them to patent abroad. Respondents were asked to rate each question 

on a five-point scale.

We pretested the survey with two of the businesses that had agreed to 

participate to ensure that the questionnaire (1) was clear and unambiguous 

and that the terms we used were precise, (2) did not place an undue burden 

on the businesses completing it, and (3) was independent and unbiased. 

Based on the results of these pretests, we modified the survey design and 

questions. We pretested the modified survey with a third business, 

USPTO Technology Center code

Type of foreign patent 

experience 1600 1700 2700 2800 3600 3700 Total

Number of businesses that 

had obtained foreign 

patents

 13 11 7 6 5 4 46

Number of businesses that 

had considered obtaining 

foreign patents

 1332 52 16

Total number of 

businesses

14 14 10 8 10 6 62
Appendix I

Objectives, Scope, and Methodology

Page 44 GAO-02-789 Foreign Patent Challenges

following the procedures described above, and did not make further 

modifications. We included this pretest in our overall survey results. 

We faxed the survey to 59 businesses in December 2001. In all, 38 of the 59 

companies we surveyed responded. (See app. V for the entire survey and 

the results.) Although we initially randomly selected the sample of small 

businesses, the number we ultimately consulted was limited because 

information was not available for a substantial number of businesses. 

Therefore, the information in this report does not represent the overall set 

of small businesses that seek foreign patent protection. After receiving 

these responses, we conducted follow-up telephone interviews with 18 of 

the small businesses to obtain more detailed comments about their 

answers, to understand more about their foreign patent decisions, and to 

discuss the impact of foreign patent impediments on those decisions. 

In this report, we present (1) the results of the close-ended questions from 

the small business survey and (2) illustrative examples from our telephone 

interviews of small businesses. 

We did our work from May 2001 to June 2002 in accordance with generally 

accepted government auditing standards.
Page 45 GAO-02-789 Foreign Patent Challenges

Appendix II

Information about the Small Business Survey 

Population ApendxiI

Thirty-eight small businesses responded to our survey about issues related 

to foreign patents. These businesses ranged in size based on number of 

employees, operated in a cross-section of industries, were based 

throughout the United States, and had various levels of experience with 

foreign patents. This appendix provides descriptive information about 

these small businesses.

Size of Businesses 

Surveyed

We selected potential businesses for our survey based on their claim in a 

1997 U.S. patent application that they were a small business (having 500 or 

fewer employees), as shown in figure 11. While most of the businesses that 

responded to our survey continued to meet this definition at the time of our 

survey (December 2001), some were larger. Many of the surveyed 

companies had grown in size since filing their 1997 patent application, 

some through acquisitions of or by, or joint ventures with, other 

companies. However, others had become smaller since 1997.

Figure 11: Number of Employees in Small Businesses That GAO Surveyed

Source: GAO analysis of small business surveys.
Appendix II

Information about the Small Business Survey 

Population

Page 46 GAO-02-789 Foreign Patent Challenges

Industries of 

Businesses Surveyed

We identified the businesses we surveyed based on the technological 

classification of a U.S. patent they had applied for in 1997. However, the 

technology areas in which businesses obtain patents do not necessarily 

correspond to the industry the business is in. We asked the businesses to 

self-identify their industry, as shown in figure 12.

Figure 12: Industries of Small Businesses That GAO Surveyed

Source: GAO analysis of small business surveys.
Appendix II

Information about the Small Business Survey 

Population

Page 47 GAO-02-789 Foreign Patent Challenges

Locations of 

Businesses Surveyed

The 38 businesses that responded to our survey were based in 19 states 

throughout the United States, as shown in figure 13.

Figure 13: Locations of Small Businesses That GAO Surveyed

Source: GAO analysis of small business surveys.
Appendix II

Information about the Small Business Survey 

Population

Page 48 GAO-02-789 Foreign Patent Challenges

Patent Behavior of 

Businesses Surveyed

The businesses that we surveyed held a range of U.S. and foreign patents. 

About three-fourths held 20 or fewer U.S. patents, and about 60 percent 

held 20 or fewer foreign patents. Nearly 90 percent of the businesses had 

pending U.S. patent applications, while about 80 percent had pending 

foreign patent applications. See figure 14.

Figure 14: Number of U.S. and Foreign Patents Held and Pending among the Small Businesses That GAO Surveyed 

Note: Some of the 38 survey respondents did not provide information on the number of U.S. and 

foreign patents held and pending.

Source: GAO analysis of small business surveys.

The businesses that held foreign patents had obtained patent coverage in 

33 countries or locations outside the United States, as shown in figure 15.
Appendix II

Information about the Small Business Survey 

Population

Page 49 GAO-02-789 Foreign Patent Challenges

Figure 15: Foreign Countries or Locations in Which Small Businesses That GAO Surveyed Held Patents

Source: GAO analysis of small business surveys.
Page 50 GAO-02-789 Foreign Patent Challenges

Appendix III

Members of GAO’s Patent Attorney Panel ApendxiI

Andrew C. Aitken, Partner, Venable, Baetjer, Howard & Civiletti, 

Washington, D.C. 

Robert A. Armitage, Vice President and General Patent Counsel, Eli Lilly 

and Company, Indianapolis, Indiana

Charles Berman, Partner, Oppenheimer, Wolff & Donnelly, Los Angeles, 

California

Robert P. Blackburn, Vice President and Chief Patent Counsel, Chiron 

Corporation, Emeryville, California

Margaret A. Boulware, Shareholder, Jenkens & Gilchrist, Houston, Texas

Michael J. Buchenhorner, Esq., PA, Palo Alto, California

Jay L. Chaskin, Of Counsel, Cantor Colburn LLP, Norwalk, CT; Retired 

International Patent Counsel, General Electric Company, Fairfield, 

Connecticut

Todd Dickinson, Partner, Howrey Simon Arnold & White, Washington, D.C. 

Mary Ann Dillahunty, Partner, Burns, Doane, Swecker & Mathis LLP, 

Redwood Shores, California

James A. Forstner, Esq., Private Consultant, Arlington, Virginia

Kathleen Fowler, Senior Patent Counsel, Immunex Corporation, Seattle, 

Washington

J. William Frank, III, Partner, McCracken and Frank, Chicago, Illinois

Gary L. Griswold, Chief Intellectual Property Counsel, 3M; President, 3M 

Innovative Properties Company, St. Paul, Minnesota

Samson Helfgott, Director of Patents, Katten Muchin Zavis Rosenman, New 

York, New York

Max D. Hensley, Vice President of Intellectual Property, Gilead Sciences, 

Inc., Foster City, California
Appendix III

Members of GAO’s Patent Attorney Panel

Page 51 GAO-02-789 Foreign Patent Challenges

David W. Hill, Partner, Finnegan, Henderson, Farabow, Garrett & Dunner, 

L.L.P., Washington, D.C.

John H. Hornickel, Chief Intellectual Property Counsel, 

Bridgestone/Firestone Americas Holding, Inc., Akron, Ohio

Alan J. Kasper, Partner, Sughrue Mion, P.L.L.C., Washington, D.C. 

Irwin M. Krittman, Vice President for Patent Administration, Thomson 

Multimedia Licensing Inc., Princeton, New Jersey

Maria C.H. Lin, Partner, Morgan & Finnegan, L.L.P., New York, New York

Nancy J. Linck, Senior Vice President, General Counsel, and Secretary, 

Guilford Pharmaceuticals Inc., Baltimore, Maryland

Doug Luftman, Corporate Counsel, CIENA Corporation, Cupertino, 

California

Gregory J. Maier, Senior Partner, Oblon, Spivak, McClelland, Maier & 

Neustadt, P.C., Arlington, Virginia

Michael Meller, Partner, Anderson Kill & Olick, P.C., New York, New York

Ann M. Mueting, Mueting, Raasch & Gebhardt, Minneapolis, Minnesota

Stephen L. Noe, Assistant General Patent Counsel – Europe, Caterpillar 

Inc., Peterborough, England

Michael J. Pantuliano, Counsel, Clifford Chance Rogers & Wells LLP, New 

York, New York 

John B. Pegram, Principal, Fish & Richardson P.C., New York, New York

John H. Pilarski, Group Technology Counsel, Illinois Tool Works, Glenview, 

Illinois 

Peter W. Roberts, Founding Member, Roberts, Mlotkowski & Hobbes, P.C., 

Fairfax, Virginia

Bernard F. Rose, Ph.D., Partner, Lyon & Lyon, LLP, San Jose, California
Appendix III

Members of GAO’s Patent Attorney Panel

Page 52 GAO-02-789 Foreign Patent Challenges

John M. Sanders, Sughrue Mion, P.L.L.C., San Diego, California

Victor Siber, Partner, Clifford Chance Rogers & Wells LLP, New York, New 

York

Liza K. Toth, Vice President for Intellectual Property, Matrix 

Semiconductor, Inc., Santa Clara, California

Ann S. Viksnins, Esq., Shareholder, Schwegman, Lundberg, Woessner & 

Kluth, P.A., Minneapolis, Minnesota

Michael Walker, Associate General Counsel, Intellectual Property, E.I. du 

Pont de Nemours and Company, Wilmington, Delaware

Harold C. Wegner, Partner, Foley and Lardner, Washington, D.C.

Elizabeth C. Weimar, Esq., Of Counsel, Morgan, Lewis & Bockius LLP, 

Washington, D.C. 

Daniel N. Yannuzzi, Vice President, Chief Intellectual Property Counsel, 

Conexant Systems, Inc., Newport Beach, California
Page 53 GAO-02-789 Foreign Patent Challenges

Appendix IV

Results of the Patent Attorney Panel Surveys ApendxiIV

This appendix presents the results from the expert panel of patent 

attorneys. Included here are the questions and results from the three 

questionnaires that were completed by members of the panel selected for 

this study (referred to as “phase I,” “phase II,” and “phase III”). We 

administered the questionnaires for phase I and II over the Internet; we 

administered phase III via E-mail.

Phase I Phase I consisted entirely of open-ended questions on several related 

themes. The questions addressed

1. factors businesses should consider in deciding whether to seek, obtain, 

and maintain foreign patent protection;

2. impediments businesses face in seeking, obtaining, and maintaining 

foreign patent protection;

3. differences between large and small businesses in seeking, obtaining, 

and maintaining foreign patent protection;

4. missteps small businesses typically make in seeking, obtaining, and 

maintaining foreign patent protection;

5. amount of foreign patent protection that small businesses hold;

6. suggestions for small businesses seeking foreign patent protection; and

7. potential public assistance options to help small businesses overcome 

impediments to foreign patenting challenges.

Phase II We analyzed the responses to questions 2, 3, 5, 6, and 7 above and used 

them as a foundation to develop the phase II questionnaire. We also 

analyzed questions 1 and 4 but chose not to pursue these themes in phase 

II. Phase II consisted of several series of closed-ended questions on items 

related to the themes. In phase II, panelists rated these items on various 

dimensions (for example, importance, usefulness, feasibility) depending 

upon the theme. As part of the analysis, we calculated various descriptive 

statistics on the responses to the phase II questionnaire. We report on these 

statistics in this appendix.
Appendix IV

Results of the Patent Attorney Panel Surveys

Page 54 GAO-02-789 Foreign Patent Challenges

Impediments Businesses 

Face in Seeking, Obtaining, 

and Maintaining Foreign 

Patent Protection (question 

2 in phase I)

In the phase I questionnaire, we asked each member of the patent attorney 

panel to “[p]lease identify and briefly describe the impediments that 

businesses20 face in seeking, obtaining, and maintaining foreign patent 

protection.” We compiled a list of the impediments that the attorneys 

identified and categorized them within six main groups. We then presented 

the list of impediments to the patent attorneys in phase II and asked them 

to rate the extent to which the impediments prevent small businesses from 

receiving foreign patent protection. The ratings were made on a five-point 

scale ranging from “to little or no extent” to “to a very great extent” 

(panelists were also given the option of responding “don’t know/no 

opinion”). Within the main categories of impediments, subcategory 

impediments were also presented. For example, within the first main 

category of “differences among patent systems,” subcategory items 

included “differences in laws, requirements, and standards for patenting 

between countries,” “differences in patenting procedures between 

countries,” “differences in the level of patent protection afforded by 

national patent offices,” and so on.

We calculated basic descriptive statistics on the impediments rated in the 

phase II questionnaire. These statistics included the mean (average), 

median, and standard deviation as well as the frequency distribution (that 

is, the percentages in each rating category), as shown in table 4. The main 

categories are numbered 1 through 6. Subcategory items are numbered 1.1, 

1.2, 1.3, and so on. 

20For this question, we did not make a distinction between large and small businesses, 

intending instead to initially obtain the broadest possible perspective about impediments 

that all businesses face. We asked the patent attorney panel to make distinctions between 

small and large businesses in phase I, and we made further queries about this distinction in 

phase II.
Appendix IV

Results of the Patent Attorney Panel Surveys

Page 55 GAO-02-789 Foreign Patent Challenges

Table 4: Descriptive Statistics on Impediments That Businesses Face in Seeking Foreign Patent Protection

Rating

No.

 

Factor

(1)

Mean

(2)

Median

(3)

Standard

deviation

(4)

To little

or no

extent

(%)

(5)

To

some

extent

(%)

(6)

To a

moderate

extent

(%)

(7)

To a

great

extent

(%)

(8)

To a

very

great

extent

(%)

(9)

Number of

respondents

Main category

1 Differences among patent 

systems (e.g., differing laws, 

lack of harmonization)

3.39 3 1.2 6% 22% 25% 22% 25% 36

2 Company-specific 

impediments (e.g., 

management skill level, 

foreign patenting knowledge, 

resources)

3.50 4 1.0 0 19 28 36 17 36

3 Country-specific impediments 

(e.g., level of patent protection 

and enforcement, language 

and cultural barriers)

3.64 4 1.1 3 14 22 39 22 36

4 USPTO-related impediments 

(e.g., lack of foreign patenting 

assistance, quality of USPTO 

work and services)

1.86 1 1.1 51 23 17 6 3 35

5 Limited availability of foreign 

patenting advice (e.g., limited 

number of U.S. and foreign 

patent attorneys/agents with 

extensive foreign patent 

expertise)

2.75 3 1.4 25 17 31 14 14 36

6 Costs associated with foreign 

patenting

4.61 5 0.6 0 0 3 33 64 33

Subcategory

1 Differences among patent systems

1.1 Differences in the laws, 

requirements, and standards 

for patenting between 

countries (e.g., first-to-invent 

vs. first-to-file, absolute 

novelty)

3.25 3 1.2 8 19 31 22 19 36
Appendix IV

Results of the Patent Attorney Panel Surveys

Page 56 GAO-02-789 Foreign Patent Challenges

1.2 Differences in the patenting 

procedures between countries 

(e.g., when patent 

maintenance fees are paid, 

when applications should be 

filed)

2.60 3 1.1 17 29 37 11 6 35

1.3 Differences in the level of 

patent protection afforded by 

national patent offices (e.g., 

claims coverage, what is 

patentable)

3.27 3 1.0 0 28 31 28 14 36

1.4 Differences in the languages 

used in patent 

process/required translations

3.72 4 1.3 8 11 17 28 36 36

1.5 Level of patent harmonization

(e.g., lack of commonly 

accepted or global patent 

search and examination, lack 

of commonly accepted 

regional or global patent, and 

lack of regional or global 

patent enforcement)

3.61 4 1.2 6 11 25 33 25 36

2 Company-specific impediments

2.1 Insufficient resources 

allocable to foreign patents 

(e.g., limited ability to pay for 

foreign patenting costs and 

experienced legal 

representation)

4.39 4.5 0.7 0 0 11 39 50 36

2.2 Limited knowledge about 

overseas patenting (e.g., 

information about international 

patent protection, foreign 

patent systems, filing options 

and strategies, patent 

maintenance and 

enforcement, and patent costs 

and cost-saving measures).

3.75 4 0.9 0 6 36 36 22 36

2.3 Limited use of marketing and 

cost/benefit analyses

3.46 4 1.1 3 20 23 37 17 35

(Continued From Previous Page)

Rating

No.

 

Factor

(1)

Mean

(2)

Median

(3)

Standard

deviation

(4)

To little

or no

extent

(%)

(5)

To

some

extent

(%)

(6)

To a

moderate

extent

(%)

(7)

To a

great

extent

(%)

(8)

To a

very

great

extent

(%)

(9)

Number of

respondents
Appendix IV

Results of the Patent Attorney Panel Surveys

Page 57 GAO-02-789 Foreign Patent Challenges

2.4 Limitations on patent asset 

management capabilities 

(e.g., sophistication of 

patenting and patent 

management techniques, 

ability to leverage and manage 

resources for patenting, 

experience in certain 

countries, long-term 

considerations about patent 

portfolio, assessments of 

patent value in certain 

countries)

3.64 4 1.0 0 11 36 31 22 36

2.5 Inappropriate timing of 

patenting decisions (e.g., 

whether or not company has 

filed for/obtained the U.S. 

patent, has begun process 

early enough/missed 

deadlines, or has disclosed 

invention prior to filing patent 

application)

3.44 3 1.1 3 17 33 28 19 36

2.6 Life cycle of product/invention 

relative to patent processing 

times or patent term

2.78 3 0.8 3 36 44 14 3 36

2.7 Fear of technology being 

stolen or infringed upon (e.g., 

subject matter prone to 

design-arounds, fear of patent 

application being a template 

for infringement)

2.61 3 0.9 11 33 42 11 3 36

2.8 Limited overseas presence 

(e.g., level of business 

experience in certain 

countries, ability to detect 

infringement overseas)

3.4 3.5 1.0 0 22 28 33 17 36

(Continued From Previous Page)

Rating

No.

 

Factor

(1)

Mean

(2)

Median

(3)

Standard

deviation

(4)

To little

or no

extent

(%)

(5)

To

some

extent

(%)

(6)

To a

moderate

extent

(%)

(7)

To a

great

extent

(%)

(8)

To a

very

great

extent

(%)

(9)

Number of

respondents
Appendix IV

Results of the Patent Attorney Panel Surveys

Page 58 GAO-02-789 Foreign Patent Challenges

3 Country-specific impediments

3.1 Nature of national patent 

systems (e.g., nature of 

country’s intellectual property 

laws, strength and 

competency of national patent 

office)

3.36 3 0.9 0 17 42 31 11 36

3.2 Nature of legal infrastructure 

(e.g. nature of overall legal 

infrastructure, sophistication of 

judges, extent to which system 

allows discovery/due 

process/traditional appeals)

3.51 4 1.2 3 23 20 29 26 35

3.3 Nature of patent protection 

available (e.g., difficulty and 

uncertainty obtaining a patent; 

lack of, inadequate, or narrow 

patent protection; statutory 

exclusions of certain subject 

matter/claims; and short 

patent term)

3.19 3 1.0 0 25 42 22 11 36

3.4 Barriers to filing and 

prosecuting patent (e.g., lack 

of a grace period; regulatory 

burdens associated with filing, 

such as apostille, notarization, 

legalization; long processing 

times or delays in establishing 

rights; and country not a 

member of the PCT)

3.31 3 1.1 6 14 39 28 14 36

3.5 Poor quality or difficult patent 

examinations (e.g., lack of 

substantive or effective 

examinations, uniquely 

stringent examination 

practices, and poorly trained 

examiners)

2.69 3 1.0 8 39 31 19 3 36

3.6 Inadequate or difficult patent 

enforcement (e.g., 

nonexistent, ineffective, or 

unpredictable enforcement)

3.91 4 0.9 0 9 20 43 29 35

(Continued From Previous Page)

Rating

No.

 

Factor

(1)

Mean

(2)

Median

(3)

Standard

deviation

(4)

To little

or no

extent

(%)

(5)

To

some

extent

(%)

(6)

To a

moderate

extent

(%)

(7)

To a

great

extent

(%)

(8)

To a

very

great

extent

(%)

(9)

Number of

respondents
Appendix IV

Results of the Patent Attorney Panel Surveys

Page 59 GAO-02-789 Foreign Patent Challenges

3.7 Market and business climate 

(e.g., market difficult to access 

or predict, government 

restricts product marketing, 

prevalence of corruption or 

protectionism, lack of 

transparency)

3.33 3 1.2 8 14 31 31 17 36

3.8 Country-specific 

characteristics (e.g., monetary 

conversion/ payment 

differences, time zone 

differences)

2.06 2 1.1 36 36 17 8 3 36

3.9 Cultural differences (e.g., 

language barriers and need 

for translations)

3.40 4 1.3 6 26 14 31 23 35

3.10 Negative bias against foreign 

patentees

2.20 2 1.1 26 46 14 11 3 35

4 USPTO-specific impediments

4.1 Lack of foreign patenting 

assistance/information from 

USPTO (e.g., lack of 

assistance with the PCT 

process provided by USPTO, 

lack of information/poor quality 

information provided by 

USPTO on foreign patent 

systems and foreign filing)

2.11 2 1.2 37 34 14 9 6 35

4.2 Quality of work provided by 

USPTO (e.g., timeliness and 

quality of work that may be of 

value to other patent offices)

2.11 2 1.3 42 31 11 8 8 36

4.3 Insufficient resources at 

USPTO (e.g., number of staff, 

level of funds)

2.42 2 1.3 28 36 14 11 11 36

5 Limited availability of foreign patenting advice

5.1 Limited availability of 

experienced and 

knowledgeable U.S. patent 

attorneys (i.e., attorneys that 

know about and are able to 

advise on foreign patenting)

2.67 3 1.1 17 28 33 17 6 36

(Continued From Previous Page)

Rating

No.

 

Factor

(1)

Mean

(2)

Median

(3)

Standard

deviation

(4)

To little

or no

extent

(%)

(5)

To

some

extent

(%)

(6)

To a

moderate

extent

(%)

(7)

To a

great

extent

(%)

(8)

To a

very

great

extent

(%)

(9)

Number of

respondents
Appendix IV

Results of the Patent Attorney Panel Surveys

Page 60 GAO-02-789 Foreign Patent Challenges

5.2 Limited availability of 

experienced or knowledgeable 

foreign patent 

attorneys/agents

2.06 2 1.1 3.9 31 17 14 0 36

6 Costs associated with foreign patenting

6.1 Costs related to obtaining 

foreign patents (e.g., patent 

search expenses, national 

stage filing fees, PCT fees, 

U.S. and foreign attorney fees, 

patent agent fees, translation 

costs, etc.)

4.51 5 0.8 0 3 9 23 66 35

6.1a Patent search expenses 

(private)

2.16 2 1.0 31 31 28 9 0 32

6.1b National stage filing fees 

(official fees for a particular 

country)

3.47 3 1.1 3 18 32 24 24 34

6.1c PCT fees (official fees) 2.71 3 1.0 9 37 31 20 3 35

6.1d Prosecution fees (official fees 

for a particular country)

3.46 3 1.0 3 14 34 31 17 35

6.1e U.S. attorney fees (i.e., for 

legal services rendered, 

consultations, opinions, 

preparing and processing 

documents, responding to 

office actions, etc.)

3.26 3 0.9 0 20 43 29 9 35

6.1f Foreign attorney/patent agent 

fees (i.e., for legal services 

rendered, consultations, 

opinions, preparing and 

processing documents, 

responding to office actions, 

etc.)

3.69 4 1.1 3 9 34 26 29 35

6.1g Translation costs 4.57 5 0.8 0 6 0 26 69 35

6.2 Costs related to maintaining 

foreign patents (e.g., 

maintenance fees, U.S. and 

foreign attorney fees, patent 

agent fees, etc.)

3.97 4 1.1 0 12 21 26 41 34

6.2a Maintenance fees through the 

life of the patent (official fees)

3.71 4 1.1 3 11 29 26 31 35

(Continued From Previous Page)

Rating

No.

 

Factor

(1)

Mean

(2)

Median

(3)

Standard

deviation

(4)

To little

or no

extent

(%)

(5)

To

some

extent

(%)

(6)

To a

moderate

extent

(%)

(7)

To a

great

extent

(%)

(8)

To a

very

great

extent

(%)

(9)

Number of

respondents
Appendix IV

Results of the Patent Attorney Panel Surveys

Page 61 GAO-02-789 Foreign Patent Challenges

Legend

PCT = Patent Cooperation Treaty

USPTO = U.S. Patent and Trademark Office

Note: Percentages may not add to 100 due to rounding. 

Source: GAO analysis of patent attorney panel questionnaires.

6.2b U.S. attorney fees (i.e., for 

legal services rendered, 

consultations, opinions, 

preparing and processing 

documents, etc.)

2.54 2 1.2 20 31 31 9 9 35

6.2c Foreign attorney/patent agent 

fees (i.e., for legal services 

rendered, consultations, 

opinions, preparing and 

processing documents, etc.)

2.91 3 1.34 17 23 29 14 17 35

6.3 Costs related to enforcing 

foreign patents (e.g., U.S. and 

foreign attorney fees, patent 

agent fees, other enforcement 

costs, etc.)

3.91 4 1.2 0 18 18 21 44 34

6.3a U.S. attorney fees (i.e., for 

legal services rendered, 

consultations, opinions, 

preparing and processing 

documents, etc.)

3.03 3 1.3 6 39 21 12 21 33

6.3b Foreign attorney/patent agent 

fees (i.e., for legal services 

rendered, consultations, 

opinions, preparing and 

processing documents, etc.)

3.64 4 1.1 3 15 2 4 3 0 27 33

6.3c Translation fees 3.61 4 1.3 6 16 19 26 32 31

6.3d Official fees and other costs 2.97 3 1.0 6 25 41 22 6 32

6.4 Total foreign patenting costs 

(i.e., for obtaining, 

maintaining,

and enforcing foreign patents)

4.46 5 0.8 0 3 11 23 63 35

(Continued From Previous Page)

Rating

No.

 

Factor

(1)

Mean

(2)

Median

(3)

Standard

deviation

(4)

To little

or no

extent

(%)

(5)

To

some

extent

(%)

(6)

To a

moderate

extent

(%)

(7)

To a

great

extent

(%)

(8)

To a

very

great

extent

(%)

(9)

Number of

respondents
Appendix IV

Results of the Patent Attorney Panel Surveys

Page 62 GAO-02-789 Foreign Patent Challenges

Differences Between Large 

and Small Businesses in 

Seeking, Obtaining, and 

Maintaining Foreign Patent 

Protection (question 3 in 

phase I)

In phase I, we asked panelists: “[Do] the impediments you identified differ 

between small and large businesses?” After analyzing those responses, we 

followed up in phase II with the following series of questions. (For ease of 

presentation, this portion of the questionnaire is reproduced in figure 16. 

“N” indicates the number of patent attorneys answering the question. 

Responses are presented as a percentage of those that answered the 

question.)
Appendix IV

Results of the Patent Attorney Panel Surveys

Page 63 GAO-02-789 Foreign Patent Challenges

Figure 16: Patent Attorney Reponses to Questions 11 and 12 of Phase II

Source: GAO analysis of patent attorney panel questionnaires.
Appendix IV

Results of the Patent Attorney Panel Surveys

Page 64 GAO-02-789 Foreign Patent Challenges

Amount of Foreign Patent 

Protection Small Businesses 

Hold (question 5 in phase I)

In phase I, we asked panelists: “[D]o you believe that small businesses are 

generally seeking, obtaining, and maintaining an amount of foreign patent 

protection that is appropriate for their business needs and plans?” After 

analyzing the narrative responses to that question, we followed up with the 

following series of questions. (For ease of presentation, this portion of the 

questionnaire is reproduced in figure 17. “N” indicates the number of patent 

attorneys answering the question. Responses are presented as a percentage 

of those that answered the question.)
Appendix IV

Results of the Patent Attorney Panel Surveys

Page 65 GAO-02-789 Foreign Patent Challenges

Figure 17: Patent Attorney Responses to Questions 13, 14, and 15 of Phase II

Source: GAO analysis of patent attorney panel questionnaires.
Appendix IV

Results of the Patent Attorney Panel Surveys

Page 66 GAO-02-789 Foreign Patent Challenges

Suggestions for Small 

Businesses Seeking Foreign 

Patent Protection

In phase I, we asked panelists: “What could small businesses do better as 

they consider whether or not to seek, obtain, and maintain foreign patent 

protection?” Table 5 presents a consolidated list of the suggestions that the 

panelists offered. In phase II, we presented this list and asked the 

attorneys: “How important are each of the following suggestions for small 

businesses to consider?” Response options ranged from “least important” 

to “most important” (see columns (4) through (8)), in addition to a “don’t 

know/no opinion” option. The items are presented in rank order by the 

mean rating (column (1)). We calculated basic descriptive statistics on the 

patent attorneys’ ratings for each suggestion. 
Appendix IV

Results of the Patent Attorney Panel Surveys

Page 67 GAO-02-789 Foreign Patent Challenges

Table 5: Descriptive Statistics on Suggestions for Small Businesses to Consider When Seeking, Obtaining, and Maintaining 

Foreign Patent Protection 

Rating

No.

Suggestions for 

small businesses 

seeking foreign 

patent protection

(1)

Mean

(2)

Median

(3)

Standard

deviation

(4)

Least

important

(%)

(5)

Somewhat

important

(%)

(6)

Moderately

important

(%)

(7)

Important

(%)

(8)

Most

important

(%)

(9)

Number of

respondents

1 Avoid divulging 

information about 

the invention prior to 

filing a U.S. 

application

4.83 5 0.4 0% 0% 0% 17% 83% 36

2 Be familiar with key 

dates and deadlines 

that are specified 

under U.S., foreign, 

and international 

law, and take foreign 

filing actions 

accordingly

4.58 5 0.7 0 3 3 28 67 36

3 Only file in countries 

where protection will 

be meaningful and 

patent will produce 

a return on 

investment

4.19 4.5 1.0 0 11 8 31 50 36

4 Consider the 

company’s longrange business plan

4.14 4 0.8 0 6 8 53 33 36

5 Manage patent 

portfolio as an 

asset, and regularly 

review overseas 

portfolio

4.14 4 0.8 0 3 14 50 33 36

6 Become more 

knowledgeable 

about the total cost 

of seeking, 

obtaining, 

maintaining, and 

enforcing foreign 

patent protection

4.06 4 0.9 0 3 26 34 37 35

7 Consider the nature 

and patentabilty of 

the product

4.06 4 0.8 0 6 14 50 31 36
Appendix IV

Results of the Patent Attorney Panel Surveys

Page 68 GAO-02-789 Foreign Patent Challenges

8 Obtain experienced 

U.S. patent counsel 

that is familiar with 

foreign patenting

4.06 4 0.9 0 6 20 37 37 36

9 Realistically 

consider company’s 

willingness and 

ability to enforce 

patents abroad

3.94 4 0.9 0 6 25 39 31 36

10 Obtain experienced 

foreign patent 

representation

3.94 4 1.1 0 14 17 31 39 36

11 Consider using PCT 

and other treaties

3.94 4 1.0 3 3 22 42 31 36

12 Do a thorough 

market analysis 

(i.e., company’s 

interest in overseas 

markets, current 

and potential size of 

foreign markets, 

nature of 

competition, etc.)

3.86 4 0.8 0 6 22 53 19 36

13 Become more 

knowledgeable 

about foreign patent 

laws and practices 

and how they differ 

from U.S. patent 

laws and practices

3.78 4 0.9 0 6 33 39 22 36

14 Begin to consider 

foreign patenting 

options early, such 

as in the R&D 

phase, and seek 

legal advice at that 

time

3.75 4 1.1 3 17 6 53 22 36

15 Involve top company 

officials in patenting 

decisions

3.75 4 1.0 0 14 19 44 22 36

16 Estimate cradle-tograve foreign 

patenting costs, and 

do a thorough 

cost/benefit analysis

3.61 4 1.2 3 19 19 31 28 36

(Continued From Previous Page)

Rating

No.

Suggestions for 

small businesses 

seeking foreign 

patent protection

(1)

Mean

(2)

Median

(3)

Standard

deviation

(4)

Least

important

(%)

(5)

Somewhat

important

(%)

(6)

Moderately

important

(%)

(7)

Important

(%)

(8)

Most

important

(%)

(9)

Number of

respondents
Appendix IV

Results of the Patent Attorney Panel Surveys

Page 69 GAO-02-789 Foreign Patent Challenges

Legend

PCT = Patent Cooperation Treaty

R&D = research and development

Note: Percentages may not add to 100 due to rounding. 

Source: GAO analysis of patent attorney panel questionnaires.

17 Consider alternative 

ways of 

commercializing 

foreign patent (i.e., 

licensing, joint 

ventures, partner 

with other U.S. or 

foreign firms, etc.)

3.61 4 1.2 6 14 17 42 22 36

18 Consider strategic 

options in the 

development of 

foreign patent 

applications (i.e., file 

shorter applications, 

design applications 

to meet foreign 

requirements, 

modify claims, 

consider utility 

patents where 

available, etc.)

3.58 4 1.0 3 14 22 44 17 36

19 Seek training 

opportunities on 

foreign patent 

protection for any inhouse counsel and 

other staff

3.39 3 1.2 3 25 25 25 22 36

20 Seek advice and 

partner with other 

businesses

2.91 3 1.1 12 24 29 32 3 34

(Continued From Previous Page)

Rating

No.

Suggestions for 

small businesses 

seeking foreign 

patent protection

(1)

Mean

(2)

Median

(3)

Standard

deviation

(4)

Least

important

(%)

(5)

Somewhat

important

(%)

(6)

Moderately

important

(%)

(7)

Important

(%)

(8)

Most

important

(%)

(9)

Number of

respondents
Appendix IV

Results of the Patent Attorney Panel Surveys

Page 70 GAO-02-789 Foreign Patent Challenges

Potential Federal Actions to 

Help Small Businesses 

Overcome Impediments to 

Obtaining Foreign Patents 

(question 7 in phase I)

In phase I, we asked the patent attorney panel: “[Do] you think any public 

assistance (e.g., grants, technical assistance, etc.) or legislation should be 

introduced to help small businesses overcome the foreign patenting 

challenges that you identified? If so, what should these be?” As with other 

themes discussed, some of the main categories here also contained related 

subcategory options. In phase II, we first asked panelists two close-ended 

questions about whether they believed public assistance measures were 

needed to address impediments that small businesses faced in seeking 

foreign patent protection. These two questions are presented below. (For 

ease of presentation, this portion of the questionnaire is reproduced in 

figure 18. “N” indicates the number of patent attorneys answering the 

question. Responses are presented as a percentage of those that answered 

the question.)
Appendix IV

Results of the Patent Attorney Panel Surveys

Page 71 GAO-02-789 Foreign Patent Challenges

Figure 18: Patent Attorney Responses to Questions 17 and 18 of Phase II

Source: GAO analysis of patent attorney panel questionnaires.
Appendix IV

Results of the Patent Attorney Panel Surveys

Page 72 GAO-02-789 Foreign Patent Challenges

After posing these questions, we then asked the patent attorney panel to 

rate a list of the public assistance options we developed based on their 

responses in phase I (presented in table 6). We asked them to rate the 

options on two dimensions: usefulness and feasibility. We calculated basic 

descriptive statistics on the patent attorneys’ ratings for each dimension.
Appendix IV

Results of the Patent Attorney Panel Surveys

Page 73 GAO-02-789 Foreign Patent Challenges
Appendix IV

Results of the Patent Attorney Panel Surveys

Page 74 GAO-02-789 Foreign Patent Challenges

Table 6: Descriptive Statistics on Public Assistance Options to Help Small 

Businesses Overcome Impediments to Seeking, Obtaining, and Maintaining Foreign 

Patents

No. Public assistance option

(1)

Mean

1 Information and education for small businesses about 

foreign patenting

Useful 3.89

Feasible 3.67

1a Information explaining the business rationale and value 

of foreign patenting

Useful 4.11

Feasible 3.66

1b Information explaining patent value in certain countries Useful 4.26

Feasible 3.88

1c Information describing foreign patent laws and 

differences in foreign patent systems

Useful 4.03

Feasible 3.94

1d Information describing foreign patenting strategies and 

filing options (e.g., when to file, what is patentable 

where, how best to file (PCT, national))

Useful 4.43

Feasible 4.00

1e Information explaining the impediments to foreign 

patenting

Useful 4.03

Feasible 3.69

1f Information describing the cost of foreign patenting Useful 4.57

Feasible 4.14

1g Information explaining foreign patent enforcement Useful 4.29

Feasible 3.77

2 Financial assistance to small businesses for foreign 

patenting

Useful 3.06

Feasible 2.31

2a Financial assistance for the research and development 

of inventions

Useful 3.37

Feasible 2.62

2b Financial assistance for foreign patenting in general Useful 3.11

Feasible 2.26

2c Financial assistance for the cost of obtaining foreign 

patents

Useful 3.26

Feasible 2.35
Appendix IV

Results of the Patent Attorney Panel Surveys

Page 75 GAO-02-789 Foreign Patent Challenges

(2)

Median

(3)

Standard

deviation

(4)

Not useful or

feasible (%)

(5)

Least useful

or feasible

(%)

(6)

Moderately

useful or

feasible

(%)

(7)

Mostly useful or

feasible

(%)

(8)

Extremely

useful or

feasible

(%)

(9)

Number of

respondents

4 1.1 0% 14% 19% 31% 36% 36

4 1.2 6 11 22 33 28 36

4 0.9 0 9 11 40 40 35

4 1.1 6 11 9 60 14 35

4 0.9 0 9 3 43 46 35

4 1.1 6 6 9 53 26 34

4 1.0 0 11 14 34 40 35

4 1.0 0 14 11 40 34 35

5 0.7 0 3 6 37 54 35

4 1.1 6 6 11 37 40 35

4 0.9 0 3 31 26 40 35

4 1.1 6 9 17 49 20 35

5 0.8 0 3 9 17 71 35

4 1.0 3 6 11 34 46 35

5 0.9 0 3 17 29 51 35

4 1.1 6 3 29 34 29 35

3 1.4 20 17 14 34 14 35

2 1.3 31 34 14 11 9 35

3 1.2 6 20 26 29 20 35

2.5 1.2 18 32 26 18 6 35

3 1.2 11 23 20 34 11 35

2 1.1 26 41 18 9 6 34

4 1.3 12 21 15 35 18 34

2 1.2 26 35 24 6 9 34
Appendix IV

Results of the Patent Attorney Panel Surveys

Page 76 GAO-02-789 Foreign Patent Challenges

No. Public assistance option

(1)

Mean

2d Financial assistance for the cost of enforcing foreign 

patents

Useful 3.00

Feasible 1.91

3 Technical assistance to small business for foreign 

patenting (i.e., assistance with issues surrounding 

obtaining, maintaining, and enforcing patents)

Useful 3.29

Feasible 2.79

4 Legal assistance to samll business for foreign 

patenting (i.e., legal assistance with obtaining, 

maintaining, and enforcing patents)

Useful 3.34

Feasible 2.51

5 Better funding of USPTO to increase quality of work 

and assistance provided to small businesses for 

foreign patenting

Useful 3.14

Feasible 2.85

6 Information and education for legislators about the 

impediments small businesses face in foreign 

patenting

Useful 3.66

Feasible 3.38

7 Information and education for legislators about the 

need for patent harmonization

Useful 4.24

Feasible 3.91

8 Legislation to promote international patent cost 

reduction

Useful 4.28

Feasible 3.06

9 Legislation and other government activity to promote 

international patent harmonization

Useful 4.47

Feasible 3.53

9a U.S. government activity to increase international 

patent cooperation (e.g., increasing cooperation 

among Trilateral 

Offices, creating regional and commonly accepted 

patents, and reducing translation costs)

Useful 4.64

Feasible 4.17

9b U.S. government activity to promote harmonization in 

Europe (i.e., promoting the creation of common patent, 

patent law, and patent court in Europe)

Useful 4.44

Feasible 3.53
Appendix IV

Results of the Patent Attorney Panel Surveys

Page 77 GAO-02-789 Foreign Patent Challenges

(2)

Median

(3)

Standard

deviation

(4)

Not useful or

feasible (%)

(5)

Least useful

or feasible

(%)

(6)

Moderately

useful or

feasible

(%)

(7)

Mostly useful or

feasible

(%)

(8)

Extremely

useful or

feasible

(%)

(9)

Number of

respondents

3 1.3 18 21 18 32 12 34

2 1.1 47 29 12 9 3 34

3 1.1 0 31 26 26 17 35

3 1.1 9 38 24 24 6 34

3 1.2 9 14 34 20 23 35

2 1.2 20 40 20 9 11 35

3 1.5 14 28 17 14 28 36

2 1.5 18 35 15 9 24 34

4 1.1 3 11 29 31 26 35

3 1.1 3 21 29 29 18 34

5 1.0 0 9 12 26 53 34

4 1.1 3 9 16 38 34 32

4.5 0.9 3 3 8 36 50 36

3 1.3 14 23 20 29 14 35

5 0.8 0 6 6 25 64 36

4 1.1 0 22 25 31 22 36

5 0.7 0 3 6 17 75 36

4 0.9 0 8 11 36 44 36

5 0.8 0 6 6 28 61 36

4 1.3 11 14 14 33 28 36
Appendix IV

Results of the Patent Attorney Panel Surveys

Page 78 GAO-02-789 Foreign Patent Challenges

No. Public assistance option

(1)

Mean

9c U.S. government activity to promote creation of uniform 

standard, laws, and requirements across countries 

(e.g., globalizing or eliminating (where applicable) 

grace periods, patent forfeiture bars, prior art, and 

translation requirements; and harmonizing patenteligible subject matter)

Useful 4.69

Feasible 3.78

9d U.S. government activity to promote creation of global 

patent

Useful 4.14

Feasible 2.77
Appendix IV

Results of the Patent Attorney Panel Surveys

Page 79 GAO-02-789 Foreign Patent Challenges

Legend

PCT = Patent Cooperation Treaty

USPTO = U.S. Patent and Trademark Office

Note: Percentages may not add to 100 due to rounding. 

Source: GAO analysis of patent attorney panel questionnaires.

Phase III In Phase II, the patent attorney panel was split on the need for public 

assistance measures to help small businesses overcome impediments and, 

on average, ranked financial assistance as the least useful option for 

addressing impediments. In phase III, we developed a series of questions 

to better understand the patent attorneys’ views on whether federal 

financial assistance would be a useful or feasible way to help small 

businesses address cost-related impediments to foreign patents. 

We sent an E-mail questionnaire consisting of four questions to each 

member of the patent attorney panel. Thirty-two attorneys (82 percent of 

the 39 panelists) responded to our questions. Their answers are 

summarized in figure 19. (“N” indicates the number of attorneys answering 

the question. We present responses as a percentage of those that answered 

the question.) 

(2)

Median

(3)

Standard

deviation

(4)

Not useful or

feasible (%)

(5)

Least useful

or feasible

(%)

(6)

Moderately

useful or

feasible

(%)

(7)

Mostly useful or

feasible

(%)

(8)

Extremely

useful or

feasible

(%)

(9)

Number of

respondents

5 0.6 0 3 0 22 75 36

4 1.3 6 17 8 33 36 36

4 1.1 3 9 6 37 46 35

2 1.6 31 20 9 20 20 35
Appendix IV

Results of the Patent Attorney Panel Surveys

Page 80 GAO-02-789 Foreign Patent Challenges

Figure 19: Patent Attorney Responses to the Four Questions in Phase III
Appendix IV

Results of the Patent Attorney Panel Surveys

Page 81 GAO-02-789 Foreign Patent Challenges

Source: GAO analysis of patent attorney panel questionnaires.
Page 82 GAO-02-789 Foreign Patent Challenges

Appendix V

Results of the Small Business Survey ApendxiV

1

Small Business

Foreign Patenting Survey

1) Company information.

Contact Name(s)

Position(s)

Company Name

Address

Phone

Fax

Web Address

Number of employees Average: 170, Median: 60, Range: 1-1500

2) Number of issued U.S. patents that your company currently holds:

3) Number of U.S. patent applications pending:

The results of questions

4) Number of issued foreign patents that your company currently holds: 2-5 are in appendix II,

figure 14.

5) Number of foreign patent applications pending:

6) Countries in which foreign patents are held: European Union (Austria, Belgium, Denmark, Finland,

France, Germany, Greece, Ireland, Italy, Luxembourg, Netherlands, Portugal, Spain, Sweden,

United Kingdom), Argentina, Australia, Brazil, Canada, Chile, Hong Kong, Israel, Japan,

Malaysia, Mexico, New Zealand, Norway, Poland, Singapore, South Africa, South Korea, Taiwan,

Thailand

7) Of the following five options, would you say that your company’s overall foreign patenting strategy is to:

A. 34% Patent only in one or a few select countries

B. 8% Patent in multiple countries in one region

C. 37% Patent in multiple countries in a region and in one or more additional countries

D. 13% Patent in multiple regions

E. 8% Patent virtually worldwide

Thank you for agreeing to participate in GAO’s small business foreign patenting study.

Your answers are very valuable to us.

At the beginning of each section below, you will find general information and instructions for completing the

survey. If you have any questions regarding this survey, please contact Shirley Brothwell, (202) 512-3865,

or Jody Woods, (202) 512-3738. The information you provide will be confidential. We will only use your

responses in aggregate form. If possible, please complete the survey and fax it back to Jody Woods at (202)

512-9088 by January 4, 2002. After we receive your completed survey, we may contact you with some

additional questions.

I) Company Information - Please confirm the responses your company provided, and supply additional information where

requested. Write in any changes or responses.
Appendix V

Results of the Small Business Survey

Page 83 GAO-02-789 Foreign Patent Challenges

2

Small Business

Foreign Patenting Survey

8) Based on your company's overall foreign patenting experiences, to what extent does your company typically

consider the following types of factors when making decisions about foreign patent protection?

Factor Extent scale

Little to

none

(%)

Some

(%)

Moderate

(%)

Great

(%)

Very

great

(%)

N

8.1) Costs associated with foreign patenting 5% 3% 27% 32% 32% 37

8.2) Benefits associated with foreign patenting 0 8 19 44 28 36

8.3) Location and size of possible foreign markets 0 3 11 41 46 37

8.4) Location of your company’s or your competitors’ possible

manufacturing/assembly/R&D sites 16 16 16 22 30 37

8.5) Foreign legal systems and regulatory environments 8 24 29 26 13 38

8.6) Foreign patent systems and patent laws 8 24 22 27 19 37

8.7) Foreign patent enforcement/infringement 3 19 19 38 22 37

8.8) The nature of the technology/invention/product 5 5 27 27 35 37

8.9) The attributes and scope of the patent and the claims 8 11 22 32 27 37

8.10) The composition of your company's patent portfolio and

any related business strategies 16 5 24 35 19 37

8.11) The composition of your competition's patent portfolio and

any related business strategies 35 19 19 11 16 37

8.12) Patent timing and deadlines 27 16 24 22 11 37

8.13) Cultural and demographic factors in other countries 34 29 11 20 6 35

8.14) Other:

0 0 0 00 0

8.15) Other:

0 0 0 00 0

Legend

N = Number of responses

Note: Percents were calculated by removing any “Don’t Know/Not Applicable” responses from the total number of

responses (“N”). Percents in this appendix may not correspond to those listed in the body of the report due to

rounding.

II) Factors to Consider in Patenting Abroad - Please check the boxes that apply.
Appendix V

Results of the Small Business Survey

Page 84 GAO-02-789 Foreign Patent Challenges

3

Small Business

Foreign Patenting Survey

9) Based on your company's overall foreign patenting experiences, to what extent does your company regard the

following items as impediments to foreign patent protection? (We define “impediment” as anything that prevents,

limits, or discourages your company from obtaining foreign patent protection.)

Impediment Extent scale Little to

none

(%)

Some

(%)

Moderate

(%)

Great

(%)

Very great

(%)

N

9.1) Differences among patent systems

9.11) Differences in the laws, requirements, and

standards for patenting between countries 14% 14% 46% 14% 14% 37

9.12) Differences in the patenting procedures between

countries 14 25 39 11 11 36

9.13) Differences in the level of patent protection

afforded by national patent offices 8 16 32 24 19 37

9.14) Differences in the languages used in patent

process/need for translations 26 26 17 14 17 35

9.15) Lack of harmonization in patent search,

examination, issuance, and enforcement 11 26 34 11 17 35

9.2) Factors related to the company

9.21) Amount of resources allocable to foreign patents 8 0 22 33 36 36

9.22) Company’s overall knowledge about foreign

patenting 25 19 25 19 11 36

9.23) Company’s use of marketing and cost/benefit

analyses 26 23 29 14 9 35

9.24) Company’s patent asset management capabilities 41 15 29 9 6 34

9.25) Timing of company’s patenting decisions 36 14 25 19 6 36

9.26) Life-cycle of product/invention relative to patent

processing times or patent term 23 20 29 20 9 35

9.27) Fear of technology being stolen or infringed upon 17 14 14 31 23 35

9.28) Limited overseas presence 14 8 31 42 6 36

9.3) Factors related to specific countries

9.31) Nature of national patent systems 9 18 45 21 6 33

9.32) Nature of legal infrastructure 9 21 39 24 6 33

9.33) Nature of patent protection available 6 20 29 37 9 35

9.34) Patent filing and prosecution burdens, such as

regulatory requirements or processing delays 6 23 40 23 9 35

9.35) Poor quality or difficult patent examination 18 24 35 12 12 34

9.36) Inadequate or difficult patent enforcement 9 15 30 27 18 33

9.37) Market and business climate 3 9 26 46 17 35

III) Impediments to Patenting Abroad - Please check the boxes that apply.
Appendix V

Results of the Small Business Survey

Page 85 GAO-02-789 Foreign Patent Challenges

4

Small Business

Foreign Patenting Survey

Impediment Extent scale Little to

none

(%)

Some

(%)

Moderate

(%)

Great

(%)

Very

great

(%)

N

9.3) Factors related to specific countries (cont.)

9.38) Currency and time zone differences 76% 16% 5% 3% 0% 38

9.39) Cultural and language differences 29 39 21 3 8 38

9.310) Negative bias against foreign patentees 44 28 19 9 0 32

9.4) Factors related to the U.S. Patent and Trademark Office (U.S. PTO)

9.41) Lack of foreign patenting assistance/information from

USPTO 47 21 9 18 6 34

9.42) Quality and timeliness of USPTO work that other patent

offices use 47 19 13 9 13 32

9.43) Insufficient staff and funding resources at USPTO 48 16 10 13 13 31

9.5) Limited availability of foreign patenting advice

9.51) Limited availability of experienced and knowledgeable

U.S. patent attorneys 58 26 5 11 0 38

9.52) Limited availability of experienced or knowledgeable

foreign patent attorneys/agents 56 25 6 14 0 36

9.6) Costs associated with foreign patenting

9.61) Costs related to obtaining foreign patents 0 3 8 39 50 38

9.62) Costs related to maintaining foreign patents 3 5 16 38 38 37

9.63) Costs related to enforcing foreign patents 6 11 11 23 49 35

9.64) Total foreign patenting costs 3 3 8 34 53 38

9.7) Other:

0 00000

9.8) Other:

0 00000

Legend

N = Number of responses

Note: Percents were calculated by removing any “Don’t Know/Not Applicable” responses from the total number of

responses (“N”). Percents in this appendix may not correspond to those listed in the body of the report due to

rounding.
Appendix V

Results of the Small Business Survey

Page 86 GAO-02-789 Foreign Patent Challenges

5

Small Business

Foreign Patenting Survey

10) To what extent would the following public assistance options or strategies be helpful to your company's efforts to

obtain foreign patent protection?

Option Extent scale Little to

none

(%)

Some

(%)

Moderate

(%)

Great

(%)

Very

great

(%)

N

10.1) Information and education for small businesses about

foreign patenting (i.e., information about foreign patent

laws and systems; foreign patenting options and

strategies)

18 18 24 21 18 38

10.2) Financial assistance to small businesses for foreign

patenting (i.e., loans, grants, tax credits) 11 13 8 32 37 38

10.3) Technical assistance to small businesses for foreign

patenting (i.e., assistance with issues surrounding

obtaining and enforcing patents)

11 21 18 29 21 38

10.4) Legal assistance to small businesses for foreign

patenting (i.e., legal assistance with obtaining and

enforcing patents)

16 13 24 21 26 38

10.5) Better funding to USPTO to increase quality of work

and assistance provided to small businesses for foreign

patenting

11 28 22 17 22 36

10.6) Information and education for legislators about the

impediments small businesses face in foreign patenting 11 20 29 11 29 35

10.7) Information and education for legislators about the need

for international patent harmonization 9 9 29 23 31 35

10.8) Legislation or other government activity to promote

international patent cost reduction 5 3 22 32 38 37

10.9) Legislation or other government activity to promote

international patent harmonization 6 3 20 31 40 35

10.10) Other:

000000

10.11) Other:

000000

Legend

N = Number of responses

Note: Percents were calculated by removing any “Don’t Know/Not Applicable” responses from the total number of

responses (“N”). Percents in this appendix may not correspond to those listed in the body of the report due to

rounding.

IV) Assistance Options and Strategies – Please check the boxes that apply.
Appendix V

Results of the Small Business Survey

Page 87 GAO-02-789 Foreign Patent Challenges

6

Small Business

Foreign Patenting Survey

11) Please provide any comments you would like to share with us regarding your foreign patenting experiences.

We are paying a lot of money for foreign patents without having a clue about the protection it buys us. Almost

unaffordable for small businesses. My opinion about the U.S. patent system is not much better.

Costs extremely high.

Very expensive. Need specialized patent attorney firms to handle foreign applications. Time lag even worse

than USPTO. Largely unenforceable anyway.

As a small company we use an independent patent law firm to write and file all U.S. and foreign patent

applications. This patent law firm has a network of foreign patent associates in each country which files our

patent applications. Therefore, we see little direct impact of differences between countries, but we do see the

very high costs associated with filing and maintaining foreign patents.

Our foreign patent experience is good because we have an outside attorney who is responsible for

coordinating and advising activities. The firm is knowledgeable and has established good associations with

local foreign attorneys who help with local laws and issues.

Mexico is a pain. Corporate minutes and all kinds of proof of authorship is required-not worth it! Japan is also

difficult. Very costly for small companies and/or individuals to properly protect themselves.

Patent decisions are cost and market driven - nothing else of consequence.

The costs do become a burden. We have had no experience yet with international license or infringement.

Addressing these costs would be beneficial to us. A second concern is the publication of PCT pending

applications-- that is detrimental to small businesses, but it appears the cat is out of the bag. Note-- If

financial assistance is provided, tax credits would be of limited help as we and other start-ups often face these

expenses before we are profitable. Consider having assistance available through SBIR (the Small Business

Administration’s Small Business Innovation Research program)-- e.g. a phase III commercialization grant on

1:1 match against company or other private sector payment of PCT filing fees and perhaps some legal fees,

or low interest loans.

Don't know much about it, but what I do hear is that it is very expensive for a small consulting outfit like mine.

My patents are mostly a marketing tool, and would be difficult to enforce against a deep-pocketed infringer.

Foreign patents would be even more expensive to obtain, and impossible to enforce without millions for

lawyers. So why bother.

Our answers to certain questions vary from country to country. We are unaware of any USPTO-provided

assistance/information. Regarding federal assistance options, we need information and technical assistance.

Otherwise, government should stay out of foreign patenting.

It is currently a confusing quagmire. I feel as if we are throwing money down the drain for no benefit. Is there

really anything that will really protect a small company? We couldn't afford to enforce a foreign patent-- we'd

drop it!

Our only real concern is the high costs of obtaining and maintaining foreign patents.

Not typically worth the cost.

Thank you for participating in this survey.

V) Additional Information.
Page 88 GAO-02-789 Foreign Patent Challenges

Appendix VI

Processes and Costs Involved in Obtaining 

Foreign Patent Protection: A Hypothetical 

Scenario ApendxiVI

Companies may obtain foreign patent protection in several ways. The costs 

associated with obtaining such protection vary depending on the process 

followed, the nature of the patent sought, and the extent of global patent 

coverage desired. This appendix presents a hypothetical scenario that we 

developed for a small business seeking to patent a single invention abroad. 

Our goal was to illustrate a common foreign patent process and to estimate 

the costs that a small U.S. business21 might incur when filing for, obtaining, 

and maintaining foreign patent protection in the United States and nine 

other countries. We based this hypothetical scenario, in part, on what 

several patent attorneys advised us could be considered a “typical” small 

business patent application and process. 

Our scenario depicts a small company filing for foreign patent protection 

for one of its products in six European countries (France, Germany, Italy, 

Ireland, Sweden, and the United Kingdom), Canada, Japan, and South 

Korea. Patent laws in each of the nine countries cover the technology for 

this product, which can be protected with a single patent. The hypothetical 

company has already filed its U.S. application for this product. The U.S. 

patent application on which the company will base its foreign applications 

was relatively short and straightforward, consisting of 25 pages, 5 

drawings, and 15 claims (claims define the invention and are what make 

the patent legally enforceable). Patents will ultimately be issued in each 

country where the company is pursuing protection. In order to keep its 

patents in force, the company must pay recurring fees (referred to as 

“maintenance fees”) to each national patent office. In our scenario, the 

company opts to keep each patent in force for its full term, which is 20 

years from the date of patent application filing. (Additional information 

about our scenario and methodology can be found at the end of this 

appendix.)

Given this scenario, the estimated cost of the U.S. patent, maintained for a 

period of 20 years, is about $10,000 (in current year dollars).22 The 

21Under 13 C.F.R. part 121, the Small Business Administration (SBA) has established various 

size standards, based on economic activity or industry, for determining what a small 

business is for purposes of eligibility for SBA programs. Based on SBA standards, we 

defined a small business for purposes of conducting our work as having 500 or fewer 

employees. 

22These estimates are expressed in current year dollars because of a lack of information 

about the timing and amount of future expenditures for patent maintenance and attorney 

fees. Additional information on our scope and methodology in developing these estimates 

can be found at the end of this appendix.
Appendix VI

Processes and Costs Involved in Obtaining 

Foreign Patent Protection: A Hypothetical 

Scenario

Page 89 GAO-02-789 Foreign Patent Challenges

estimated cost of the foreign patents, maintained for a similar length of 

time, would range from about $160,000 to about $330,000 (in current year 

dollars). These are minimum estimates that include patent application 

filing and issuance fees, translation fees for applicable foreign patent 

offices, maintenance fees, and estimates of attorney and foreign patent 

agent fees associated with work related to the filing and paying of these 

fees. Actual patent costs for a patent filing strategy similar to our scenario 

could be far higher because we assumed that the patent application would 

not face a difficult examination process in any of the countries. Thus, our 

scenario eliminated many patent office and legal costs that companies 

incur in trying to obtain a patent. Actual patent costs would also vary if 

certain key assumptions were modified. For example, filing applications in 

more than nine countries would increase the cost of obtaining foreign 

protection. Also, if a patent application were longer or more complex than 

the one in our scenario, the cost to obtain patent protection abroad would 

rise because translation expenses and some foreign patent office charges 

would be higher. Conversely, if patent protection was not maintained for 

the full 20-year term in each of the countries, official fees and attorney fees 

to maintain the patent would decrease.23 The latter condition would reduce 

the overall cost of foreign patent protection relative to the U.S. cost. 

Finally, these estimates do not include costs that could be incurred from 

legal fees payable for litigation associated with possible infringement and 

defense of a patent. We use a variety of terms in this appendix. See the 

glossary for definitions.

Estimated Cost of U.S. 

Patent

The scenario assumes that the small business has already filed its U.S. 

patent. As shown in table 7, the minimum cost to obtain that patent would 

be about $6,412. This includes U.S. Patent and Trademark Office (USPTO) 

small entity filing and issuance fees, as well as attorney charges to prepare 

and file the patent application and obtain the issued patent. The minimum 

cost to maintain the patent for a 20-year term would be about $3,528. This 

includes USPTO maintenance fees that are charged 3 times during the 20-

year term after the patent is granted, as well as attorney charges to pay 

23U.S. patent maintenance costs are fully paid by the end of the twelfth year from the date 

the application was filed, whereas foreign patent maintenance costs continue to be incurred 

through the twentieth year from the date of application. Thus, holding foreign patents for 

shorter periods of time reduces the cost of foreign patent protection relative to the cost of 

U.S. protection. 
Appendix VI

Processes and Costs Involved in Obtaining 

Foreign Patent Protection: A Hypothetical 

Scenario

Page 90 GAO-02-789 Foreign Patent Challenges

those fees. In this scenario, 65 percent of the costs are incurred to obtain 

the patent and 35 percent to maintain it.

Table 7: Estimated Costs to Obtain and Maintain U.S. Patent for 20 Years

Note 1: All USPTO fees are small entity fees effective October 1, 2001.

Note 2: Attorney charges are based on the American Intellectual Property Law Association’s Report of 

Economic Survey 2001 and reflect the median charges for the subject item.

Source: GAO analysis of USPTO fees and American Intellectual Property Law Association data.

Filing for a Foreign 

Patent

A company can acquire foreign patent protection in two ways: (1) by filing 

separately in each country or region where protection is desired or (2) by 

filing for patent protection in 116 countries at the same time through an 

international application established by the 1970 Patent Cooperation Treaty 

(PCT), as amended.24

Companies may file separately in each country where protection is desired 

under the rules established by the 1883 Paris Convention, as amended. Also 

known as the Convention for the Protection of Industrial Property, this 

treaty is adhered to by 163 countries and gives limited recognition to one 

Type and stage of fee Cost in U.S. dollars

Application

USPTO basic filing fee 

Attorney charges to prepare and file patent 

application

$370

5,002

Issuance

USPTO issue fee 

Attorney charges

$640

400

Total application and issuance costs $6,412

Maintenance

USPTO fee at year 3.5

USPTO fee at year 7.5

USPTO fee at year 11.5

Attorney charges to pay 3 maintenance fees

$440

1,010

1,550

528

Total maintenance costs $3,528

Total cost to obtain and maintain the patent $9,940

24Much of the technical information presented in this appendix is drawn from Stephen Elias, 

ed., Patent, Copyright, & Trademark: A Desk Reference to Intellectual Property Law

(Berkeley: Nolo Press, 1996). 
Appendix VI

Processes and Costs Involved in Obtaining 

Foreign Patent Protection: A Hypothetical 

Scenario

Page 91 GAO-02-789 Foreign Patent Challenges

another’s country patent application filing dates. Applicants choosing this 

route must file foreign patent applications within 1 year of the date on 

which they filed their domestic patent application (known as the “priority 

date”). Applicants will face the requirements and costs that each country 

imposes upon filing their patent applications. As a result, filing separately 

may be cost-effective for those interested in holding patents in only a few 

countries. 

The second process for foreign filing is through an international patent 

application under the Patent Cooperation Treaty (PCT), which the World 

Intellectual Property Organization (WIPO) in Geneva, Switzerland, 

administers. This treaty is adhered to by 115 countries and facilitates the 

international filing of patent applications by centralizing filing procedures 

and standardizing the application format. The PCT enables applicants to 

obtain an international search report or “prior art search”25 and preliminary 

examination.26 This is commonly called the “international stage” of a PCT 

application.27 Following this stage, PCT applicants then decide in which 

countries they want to hold patents and enter processes in these countries 

to obtain such patents. This is commonly called the “national stage” of a 

PCT application. Applicants incur PCT fees during the international stage 

and national patent office fees during the national stage.28 However, by 

filing through the PCT, applicants can delay paying the national stage fees 

for up to 30 months from their patent priority date.29 This delay allows 

applicants more time to assess the value of their invention and the 

likelihood of obtaining a patent in a particular country before incurring the 

costs associated with obtaining patent protection in that country. 

25Prior art is the body of information, including patent and nonpatent literature, that patent 

offices consult to determine the patentability of an invention.

26An examination is a process in which a patent examiner will correspond with applicants 

and decide whether inventions deserve patents based on claims. 

27The expression “international phase” or “stage” is not officially used in the PCT, but 

according to WIPO, it has become customary and is used in its Patent Cooperation Treaty 

guide (http://www.wipo.int/pct/guide/en/).

28The expression “national phase” or “stage” is not officially used in the PCT, but according 

to WIPO, it has become customary and is used in WIPO’s PCT guide 

(http://www.wipo.int/pct/guide/en).

29Most patent offices, including those in our scenario, provide for a delay of 30 months. 

However, some will allow a 31-month delay from the priority date. 
Appendix VI

Processes and Costs Involved in Obtaining 

Foreign Patent Protection: A Hypothetical 

Scenario

Page 92 GAO-02-789 Foreign Patent Challenges

If an applicant desires patent protection in a region such as Europe, 

Eurasia, or Africa, the applicant may file with a regional patent office or, if 

filing through the PCT, designate a regional office. The European Patent 

Convention and the Eurasian Patent Convention are examples of regional 

patent treaties that allow applicants to file one single application for the 

contracting states within those regions. For instance, the European Patent 

Convention and its associated office, the European Patent Office, consist of 

24 member states.30

Obtaining a Foreign 

Patent Using PCT

In our scenario, the company uses the Patent Cooperation Treaty process 

for filing its foreign patents. We chose to illustrate the PCT process because 

it is a widely used and “typical” method for obtaining foreign patent 

protection, according to patent attorneys we interviewed. The PCT process 

consists of two main phases, the international stage and the national stage. 

International Stage: PCT 

Processes and Costs

The international stage of the PCT process is comprised of several steps, as 

shown in figure 20. First, applicants file a PCT application and pay 

associated filing fees to a PCT receiving office, as shown in box 1 of figure 

20. The receiving office, which is a contracting state, is the authority to 

which nationals or residents of that state submit their international 

applications.31 Second, applicants select an International Searching 

Authority32 to prepare an international search report that will provide 

information on relevant prior art based on the claims of the application.33

The International Searching Authority conducts a prior art search and 

30The European Patent Convention member states include Austria, Belgium, Bulgaria, 

Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Ireland, 

Italy, Liechtenstein, Luxembourg, Monaco, the Netherlands, Portugal, Slovakia, Spain, 

Sweden, Switzerland, Turkey, and the United Kingdom. 

31Applicants may also file with the International Bureau of WIPO regardless of the state of 

which the applicant is a resident or national. Residents or nationals who are party to 

regional patent conventions may file international applications with the regional offices that 

the conventions established.

32An International Searching Authority is a national office or intergovernmental organization 

that is highly experienced in examining patent applications and is specified by the receiving 

office. The International Searching Authority establishes documentary search reports on 

prior art with respect to inventions that are the subject of applications.

33See The World Intellectual Property Organization, Patent Cooperation Treaty: chapter 1, 

article 15 (Geneva: WIPO, http://www.wipo.int/pct/en/index.html, downloaded in May 2002).
Appendix VI

Processes and Costs Involved in Obtaining 

Foreign Patent Protection: A Hypothetical 

Scenario

Page 93 GAO-02-789 Foreign Patent Challenges

issues a search report for the applicant’s review, as shown in box 2 of figure 

20. Based on the results of the report, the applicant may decide to continue 

or discontinue the patent process in certain countries. Discontinuing the 

patent process because of an unfavorable search report allows the 

applicant to save on the costs of processing the application in various 

countries. However, the applicant may amend the claims of his or her 

application and maintain only those that are favorable and likely to result in 

the grant of a patent. 
Appendix VI

Processes and Costs Involved in Obtaining 

Foreign Patent Protection: A Hypothetical 

Scenario

Page 94 GAO-02-789 Foreign Patent Challenges

Figure 20: The International and National Stages of the PCT Process
Appendix VI

Processes and Costs Involved in Obtaining 

Foreign Patent Protection: A Hypothetical 

Scenario

Page 95 GAO-02-789 Foreign Patent Challenges

a This figure illustrates the process and timetable in cases where an applicant has first filed a U.S. 

patent application. However, applicants may file their initial application under the PCT. In these cases, 

the steps would be the same, but the timetable would differ. 

b The PCT application is due at month 12, and the fees are due at month 13.

Source: GAO analysis.

Once WIPO publishes the international application, as shown in box 3 of 

figure 20, the applicant has the option of obtaining an international 

preliminary examination report.34 The preliminary report provides an initial 

and nonbinding opinion about whether the claimed invention appears to be 

34The international preliminary examination report is produced by an International 

Preliminary Examination Authority, which is appointed in the same fashion as the 

International Searching Authority.
Appendix VI

Processes and Costs Involved in Obtaining 

Foreign Patent Protection: A Hypothetical 

Scenario

Page 96 GAO-02-789 Foreign Patent Challenges

novel, nonobvious, and industrially applicable.35 If the applicant decides 

not to obtain this preliminary report, the applicant will enter the national 

stage of the patent process. If the applicant decides to obtain an 

international preliminary examination report, he or she must file a “PCT 

chapter II demand.” The issuance of the international preliminary 

examination report, as shown in box 4 of figure 20, allows the applicant to 

assess the chances of obtaining a patent in a particular country before 

incurring the costs associated with pursuing patent protection in that 

country. 

The costs associated with the international stage include fees payable to 

the receiving office for work related to filing the international application, 

obtaining the international search report, and designating the national 

patent offices where applicants may decide to file during the national stage. 

Applicants will also incur U.S. patent attorney fees for filing and any 

applicable work corresponding to the PCT process. We will address these 

costs in the final section of this appendix. The receiving office sets the 

transmittal fee. This fee is payable for the tasks associated with the receipt 

and checking of the international application. The fee also covers the 

transmittal of application copies to WIPO and the International Searching 

Authority. The International Searching Authority sets and receives the 

search fees for establishing the international search report. The 

international fee accrues to WIPO and is the sum of the basic fee and the 

designation fees. The basic fee is for tasks that include the publication of 

the international application and the communication of notifications to the 

applicant, the receiving office, the International Searching Authority, the 

International Preliminary Examination Authority, and national and/or 

regional offices. The designation fee is payable for the first five national or 

regional offices designated in the application. There is no charge for 

designations beyond five. 

Our scenario assumes that the United States operates as the receiving 

office, as well as the International Searching Authority and the 

International Preliminary Examination Authority, for the hypothetical 

company’s patent application. Table 8 shows the fees associated with the 

international stage of the foreign filing process through the PCT. The 

company would pay four designation fees: one each for Canada, Japan, 

South Korea, and the European Patent Office. In our scenario, the company 

35See The World Intellectual Property Organization, Patent Cooperation Treaty: chapter 2, 

article 33 (Geneva: WIPO, http://www.wipo.int/pct/en/index.html, downloaded in May 2002).
Appendix VI

Processes and Costs Involved in Obtaining 

Foreign Patent Protection: A Hypothetical 

Scenario

Page 97 GAO-02-789 Foreign Patent Challenges

chooses to pursue national stage entry after chapter II processing. This 

means that the business will incur the additional costs of having 

preliminary examination conducted by an International Preliminary 

Examination Authority to further assess the chances of obtaining a patent 

for its invention in the desired countries or regions. The additional costs 

include two fees payable to the International Preliminary Examination 

Authority. The first of these is a preliminary examination fee that accrues to 

the International Preliminary Examination Authority for carrying out and 

establishing the international preliminary examination report. The second 

is a handling fee that accrues to WIPO for carrying out various tasks related 

to the international preliminary examination report. The estimated total 

cost of the international stage, given this scenario, is $2,100. 

Table 8: Estimated International Stage Patent Costs

Note: U.S. and foreign patent attorney fees not included.

a

USPTO is the receiving office.

b

USPTO is the International Searching Authority.

c

USPTO is the International Preliminary Examination Authority.

Source: USPTO fee schedule.

Type of fee Cost in U.S. dollars

PCT chapter I fees

Transmittal fee a $240

Search fee b 450

International fees (basic fee and designation fees)

Basic fee 407

Designation fee ($88x4) 352

Certified copy fee 15

Total PCT chapter I fees $1,464

PCT chapter II fees

Preliminary examination fee c $490

Handling fee 146

Total PCT chapter II fees $636

Total international stage fees (PCT chapter I and chapter II 

fees)

$2,100
Appendix VI

Processes and Costs Involved in Obtaining 

Foreign Patent Protection: A Hypothetical 

Scenario

Page 98 GAO-02-789 Foreign Patent Challenges

National Stage: National 

Patent Office Processes and 

Costs

The national stage is the second of the two main phases of the PCT patent 

procedure. For official entry into the national stage, the applicant will be 

responsible for paying the required fees to each national or regional patent 

office elected,36 along with the fees associated with furnishing a translation 

of the international application where applicable, as shown in box 5 of 

figure 20. The applicant may also be required to appoint a patent attorney 

or agent in each of the designated offices. (A patent agent is a nonattorney 

with technical training who is legally permitted to draft, file, and prosecute 

patent applications on behalf of inventors.) Such appointment may be 

required if the applicant is a nonresident of the designated office’s 

respective country. The deadlines for these requirements are generally by 

month 30 after the priority date, but some PCT contracting states may 

extend this deadline to month 31. Once these steps are completed, the 

company will officially enter the national stage via chapter I or chapter II.37

Next, the designated offices will carry out an examination of the 

application and either issue or deny the national or regional patent based 

on their respective national laws, as shown in box 6 of figure 20.

The costs associated with the national stage include official fees payable to 

each designated office for filing the patent application, examining the 

application, and granting the patent. The applicant may also incur fees for 

the translation of the patent application. In addition, the applicant will 

incur costs for any work involving a U.S. patent attorney or a foreign patent 

attorney or agent (hereafter referred to as “foreign representatives”). We 

will address these costs in the final section of this appendix.

Our scenario assumes that the company will be pursuing patents through 

three national offices--Canada, Japan, and South Korea. The company is 

also pursuing patents in six European Patent Office member states--

France, Germany, Ireland, Italy, Sweden, and the United Kingdom. Table 9 

shows the fees associated with the national stage of the foreign filing 

process through PCT. Official fees include the filing fee, state designation 

fees in the case of the European Patent Office, examination fees, and 

36The PCT defines a national or regional office as “designated” in chapter I and “elected” in 

chapter II.

37Effective April 1, 2002, the entry date for chapter I was changed from 20 months to 30 

months from the priority date pursuant to PCT Article 22. Officials from USPTO noted that 

many contracting countries of PCT have indicated that the change is incompatible with their 

current national laws. Therefore, they will not recognize the change until their respective 

national laws have been changed. 
Appendix VI

Processes and Costs Involved in Obtaining 

Foreign Patent Protection: A Hypothetical 

Scenario

Page 99 GAO-02-789 Foreign Patent Challenges

patent granting fees. The company will incur translation fees for Japan, 

South Korea, and the non-English speaking countries designated in the 

European Patent Office; namely, France, Germany, Italy, and Sweden. The 

total estimated cost of the fees associated with the national stage, given our 

scenario, is $13,417. This does not include costs associated with either U.S. 

attorney or foreign representative work. 

Table 9: Estimated National Stage Patent Costs 

Legend

EPO = European Patent Office

Note: Exchange rates used by Global IP Estimator software: British pounds = 0.6876 to the U.S. $; 

Euro = 1.1193 to the U.S. $; German marks = 2.1893 to the U.S. $; Japanese yen = 131.71 to the U.S. 

$; Canadian dollar = 1.5913 to the U.S. $; Korean won = 1,317.8 to the U.S. $.

a

 Translation fees vary according to the length of the application. Our estimate assumes 25 pages of 

translation.

Source: Global IP Estimator (software package that provides cost estimates of international patent 

applications). (Kihei, HI:Global I.P. Net, 2002).

Maintaining a Foreign 

Patent

Maintenance fees, also referred to as “annuities” or “renewal fees,” are paid 

to each patent office where a patent has been obtained. Maintenance fees 

would be applicable if the business decided to keep a patent granted to it in 

force, regardless of how the company filed. Maintenance fees keep the 

patent in effect and must be paid on a recurring basis, usually annually for 

up to 20 years after the priority date, as shown in box 7 of figure 20. Patent 

holders can expect an annual increase in fees charged by each national 

patent office for maintaining the patent. If a business decides not to 

maintain any of its patents and therefore not enforce them for a full term, 

the maintenance fees for each patent would cease from the last year during 

which the patent was kept in force. 

Our scenario assumes that the company seeks to keep the patent it 

obtained through the PCT process in force in each of the nine countries for 

National or regional 

patent office Official fees Translation feesa

Total

(cost in U.S. dollars)

Canada $314 $0 $314

EPO 3,237 1,739 4,976

Japan 1,699 2,999 4,698

South Korea 1,229 2,200 3,429

Total $6,479 $6,938 $13,417
Appendix VI

Processes and Costs Involved in Obtaining 

Foreign Patent Protection: A Hypothetical 

Scenario

Page 100 GAO-02-789 Foreign Patent Challenges

a term of 20 years from the priority date.38 Table 10 provides the total 

maintenance fees over 20 years that would be payable to the patent offices 

in our scenario, not including attorney fees. The fees would be payable to 

Japan, Canada, South Korea, and each country that the company 

designated through the European Patent Office. The total estimated cost to 

the business for full-term foreign maintenance is $83,543. This does not 

include costs associated with either U.S. attorney or foreign representative 

work.

38We assumed that the patents would be held for the full 20-year term in each country to 

show what the maximum maintenance costs might be. However, most patents are not held 

for the full term. 
Appendix VI

Processes and Costs Involved in Obtaining 

Foreign Patent Protection: A Hypothetical 

Scenario

Page 101 GAO-02-789 Foreign Patent Challenges

Table 10: Estimated Costs Involved in Maintaining a Foreign Patent in Nine 

Countries for 20 Years

Legend

EPO = European Patent Office

Note 1: Exchange rates are based on data from DRI-WEFA, World Outlook Comparison Tables, 

Forecast Data, 2001, fourth quarter, and DRI-WEFA, Monthly World Outlook (Philadelphia:DRI-WEFA, 

Feb. 15, 2002). Exchange rates are based on an average exchange rate forecast for years 2001-2005 

and years 2006-2020. 

Note 2: Maintenance fees are expressed in current year dollars because of a lack of information about 

the timing and amount of future expenditures for patent maintenance.

Note 3: Renewal fees are payable to the European Patent Office for the years before the European 

Patent Office grants the patent. In our scenario, we assume the European Patent Office grants the 

patent in year 5. As a result, the company must pay a renewal fee of $351 in year 3 and $374 in year 4 

to the European Patent Office. The figure for European Patent Office renewal fees in the table reflects 

fees for years 3 and 4 and the maintenance fees for designated member states for years 5-20. 

Sources: Canadian Intellectual Property Office, European Patent Office, German Patent and 

Trademark Office, Irish Patents Office, Italian Patent and Trademark Office, Japanese Patent Office, 

Korean Intellectual Property Office, United Kingdom Patent Office, and WIPO.

U.S. Attorney and 

Foreign Representative 

Fees 

Throughout the foreign patent process, the company will incur fees for U.S. 

attorneys and foreign patent representatives. Unlike national patent office 

fees, which governments typically publish in fee schedules, U.S. attorney 

and foreign representative costs may vary widely, depending on a number 

of factors. Therefore, they are difficult to estimate reliably. For example, 

items such as the nature of the patent sought, the extent of global patent 

coverage desired, the foreign patent process followed, and the amount of 

time patent attorneys spend modifying patent applications to meet the 

expectations of individual patent offices will affect the cost of U.S. patent 

Country Cost in U.S. dollars

Canada $1,510

France 5,001

Germany 13,520

Ireland 4,637

Italy 6,002

Japan 22,783

South Korea 18,910

Sweden 5,552

United Kingdom 4,903

EPO renewal fees 725

Total $83,543
Appendix VI

Processes and Costs Involved in Obtaining 

Foreign Patent Protection: A Hypothetical 

Scenario

Page 102 GAO-02-789 Foreign Patent Challenges

attorney and foreign representative services. U.S. patent attorney fees will 

also vary throughout the United States. For these reasons, our estimates of 

U.S. patent attorney and foreign representative costs are, at best, 

approximate. 

We presented our foreign patent scenario to, and obtained cost estimates 

from, four of the patent attorneys on our panel.39 We asked them to 

estimate the U.S. attorney and foreign representative fees that the 

hypothetical company might incur at the international and national stages 

and throughout the maintenance phase. Their estimates for the U.S. 

attorney and foreign representative charges during the international and 

national stages were similar, but their estimates of these costs during the 

maintenance phase covered a broader range. As shown in table 11, the total 

cost of U.S. attorney and foreign representative fees for the company could 

range from under $60,000 to $230,000. 

Table 11: Estimated U.S. Attorney and Foreign Representative Fees

Source: GAO analysis of patent attorney cost estimates.

Total Scenario Costs The total estimated foreign patent costs to the company in our scenario 

ranged from about $160,000 to about $330,000, as shown in table 12. In this 

scenario, the company would incur about 35 percent of the lifetime costs to 

file and obtain the foreign patents and about 65 percent of the costs to 

maintain the foreign patents for their full 20-year term. 

39These attorneys were based in San Jose, Calif.; Washington, D.C.; Minneapolis, Minn.; and 

New York City.

International

stage

National

stage

Maintenance

phase

Total

(cost in U.S.

dollars)

U.S. attorney 

fees

 <$10,000 -

$20,000

<$10,000-

$30,000

<$10,000-

$60,000

<$30,000-

$110,000

Foreign 

representative 

fees

0 $20,000-

$50,000

$10,000-

$70,000

$30,000-

$120,000

Total fees <$10,000-

$20,000

<$30,000-

$80,000

<$20,000-

$130,000

<$60,000-

$230,000
Appendix VI

Processes and Costs Involved in Obtaining 

Foreign Patent Protection: A Hypothetical 

Scenario

Page 103 GAO-02-789 Foreign Patent Challenges

Table 12: Estimated Total Foreign Patent Costs

Source: GAO analysis.

Scope and 

Methodology

To estimate the U.S. patent costs that a small business might incur, we 

obtained relevant fees from the USPTO schedule of patent fees, effective 

October 1, 2001. We used the small entity fees because the company in our 

scenario would be eligible to pay these lower fees. We obtained estimates 

for attorney costs from the American Intellectual Property Law 

Association’s Report of Economic Survey 2001. This survey is done every

2 years and, among other things, provides statistics on billing rates and 

typical charge for representative intellectual property services. The data in 

the 2001 report is based on 1,829 responses. We used the median costs 

contained in the survey for actions that corresponded to our scenario.

To estimate the foreign patent costs that a small business might incur, we 

developed our hypothetical foreign patent scenario based on information 

that we obtained from our small business survey and patent attorney panel, 

as well as on input from several patent attorneys. We took this route 

because few of the studies that we analyzed about foreign patent costs 

were tailored to small businesses. Moreover, because many caveats exist in 

the foreign patent process, a scenario enabled us to better estimate costs. 

Based on this information and input, we developed what the patent 

attorneys advised was a reasonably typical foreign patent scenario for a 

small business. This scenario included filing a patent application of average 

length and complexity in a limited number of important countries, 

reflecting the choices that small businesses have to make because of cost 

considerations. We also chose to illustrate the PCT process because it is a 

commonly used process that small businesses might follow. 

Stage Cost in U.S. dollars

International stage costs $2,100

U.S. attorney and foreign representative 

fees at the international stage

<10,000-20,000

National stage costs 13,417

U.S. attorney and foreign representative 

fees at the national stage

<30,000-80,000

Maintenance fees 83,543

U.S. attorney and foreign representative 

fees during the maintenance stage

<20,000-130,000

Total <$159,060-$329,060
Appendix VI

Processes and Costs Involved in Obtaining 

Foreign Patent Protection: A Hypothetical 

Scenario

Page 104 GAO-02-789 Foreign Patent Challenges

The scenario included a range of assumptions to help narrow the scope of 

cost estimates as much as possible, particularly for the patent attorneys 

who estimated U.S. and foreign patent attorney charges. These 

hypothetical foreign patent scenario assumptions are as follows:

1. The U.S. application consists of 25 pages, 5 drawings, and 15 claims, 

including 2 independent claims.

2. Prior art is relevant to the first independent claim and its dependent 

claims, but not to the other independent claim.

3. The first independent claim and its dependent claims are ultimately 

allowed after amendment.

4. One office action occurs.

5. No appeals, opposition, invalidation, scope trials, or the like occur.

6. The issued patent contains 15 claims.

7. The company keeps each of its patents in force for 20 years.

8. The PCT application is filed in the United States. USPTO acts as the 

receiving agent and conducts the search and examination.

We included the nine countries in our scenario for various reasons. We 

selected Japan because it is an important market, and because we wanted 

to illustrate the higher costs that companies face when they seek patent 

protection in Japan. We selected Canada because U.S. small businesses are 

eligible for lower fees there and can file their applications in English, 

thereby avoiding translation charges. We selected South Korea to represent 

developing markets where companies may wish to obtain patent 

protection. We opted to include six European countries to represent 

reasonable but still limited protection in this major foreign market. 

We obtained information about the cost of filing a PCT application in the 

United States from the USPTO schedule of PCT fees. We used the Global IP 

Estimator software published by Global I.P. Net to obtain information on 

patent fees in each country included in our scenario. This software 

provides estimates of national patent office fees for countries throughout 

the world, including translation costs where applicable. We obtained 

information about these fees and costs from Global IP Estimator in January 
Appendix VI

Processes and Costs Involved in Obtaining 

Foreign Patent Protection: A Hypothetical 

Scenario

Page 105 GAO-02-789 Foreign Patent Challenges

2002. We validated the information in the Global IP Estimator by examining 

the WIPO’s PCT applicant guides and published fees and the various 

national patent office Web sites. We obtained information about 

maintenance fees from WIPO, the European Patent Office, and the national 

patent office Web sites. Since many of these sources presented the fees in 

the national currency of the respective patent office, we used average 

exchange rates for years 2001-2005, and 2006-2020, provided by DRI-WEFA, 

an economic consulting firm. 

To obtain information about the cost of U.S. and foreign patent attorney 

services throughout the process, we surveyed four patent attorneys who 

were members of our patent attorney panel. The attorneys estimated, 

within ranges of $10,000, the U.S. patent attorney and foreign 

representative costs for the international and national stages and the 

maintenance phase of our scenario. Although the American Intellectual 

Property Law Association’s Report of Economic Survey 2001 contained 

data on U.S. patent attorney charges for these services, we did not use this 

data because it did not include foreign representative costs.

We have expressed all costs in current dollars due to a lack of information 

about the timing and amount of future expenditures for patent 

maintenance and attorney fees. We collected information on the patent 

maintenance fees for the United States and foreign countries for the patent 

scenario described in this appendix. However, we do not have a breakdown 

of the costs on an annual basis, which would enable us to convert this 

stream of payments into present value terms. Since a larger share of foreign 

patent costs in this scenario accrue in the later years as compared to the 

U.S. costs, a present value calculation will result in a greater percentage 

reduction in foreign costs than in U.S. costs. Nevertheless, foreign patent 

costs still remain substantially higher than U.S. costs. 

We also shared our analysis with USPTO officials, who provided assistance 

and technical comments.
Page 106 GAO-02-789 Foreign Patent Challenges

Appendix VII

Comments from the U.S. Patent and 

Trademark Office ApendxiVI

Note: GAO comments 

supplementing those in 

the report text appear 

at the end of this 

appendix.

See comment 1.
Appendix VII

Comments from the U.S. Patent and 

Trademark Office

Page 107 GAO-02-789 Foreign Patent Challenges

The following is GAO’s comment on the U.S. Patent and Trademark Office’s 

(USPTO) letter dated July 2, 2002.

GAO Comment 1. The enclosure to USPTO’s letter mainly provided technical comments 

that were designed to clarify our discussion of U.S. and international 

patent laws. Therefore, we chose not to reproduce them in this 

appendix. In commenting on the first recommendation, USPTO 

suggested that we recommend that USPTO “continue to consider” the 

advantages and disadvantages of various options for further patent law 

harmonization. While we recognize that USPTO has obtained some 

input from small businesses or certain organizations that represent 

them about patent law harmonization, most of this input has been in the 

form of responses to Federal Register requests for comment from the 

public. We retained our recommendation as written because we 

believe that USPTO needs to be more active in obtaining input about 

harmonization from small businesses. USPTO’s suggestions for the 

second recommendation indicated that it was not comfortable helping 

to develop original, specific information about foreign patent laws, 

requirements, procedures, and costs. We agreed with their concerns 

and modified the recommendation to direct the agencies to collect and 

make available existing information about foreign patents.
Page 108 GAO-02-789 Foreign Patent Challenges

Appendix VIII

Comments from the Small Business 

Administration ApendxiVI

Note: GAO comments 

supplementing those in 

the report text appear 

at the end of this 

appendix.
Appendix VIII

Comments from the Small Business 

Administration

Page 109 GAO-02-789 Foreign Patent Challenges

See comment 1.
Appendix VIII

Comments from the Small Business 

Administration

Page 110 GAO-02-789 Foreign Patent Challenges

The following is GAO’s comment on the Small Business Administration’s 

(SBA) letter dated July 8, 2002.

GAO Comment 1. We recognize that SBA does not have the requisite expertise on foreign 

patent laws to independently develop such information. We modified 

the recommendation to direct SBA and USPTO to collect and make 

available existing information about foreign patent protection.
Page 111 GAO-02-789 Foreign Patent Challenges

Appendix IX

GAO Contacts and Staff Acknowledgments ApendxiIX

GAO Contacts Elizabeth Sirois (202) 512-8989

Shirley Brothwell (202) 512-3865

Staff 

Acknowledgments

In addition to those named above, Martin de Alteriis, Gezahegne Bekele, 

Alan Frazier, Brandon Haller, Ernie Jackson, Rona Mendelsohn, Melissa 

Pickworth, and Jody Woods made key contributions to this report.
Page 112 GAO-02-789 Foreign Patent Challenges

Glossary

Annuities See Maintenance Fees.

Anticipated Invention An invention is said to be anticipated when it is too similar to an earlier 

invention to be considered novel. Because novelty is a requirement for 

patentability, anticipated inventions are not patentable. An invention may 

be anticipated by prior publication, prior invention, sale, public use, or 

display of the invention more than a year prior to filing the patent 

application.

Basic Fee A fee that is paid for obtaining a foreign patent upon entrance into the 

international stage and the national stage. 

Claims Claims define the invention and are what are legally enforceable. The 

specification must conclude with a claim particularly pointing out and 

distinctly defining the subject matter that the applicant regards as his or 

her invention or discovery.

Designated Office The office of a contracting state in which the protection for an invention is 

desired. See Designation.

Designation An indication that the applicant makes, in the request for an international 

application filed under the Patent Cooperation Treaty, as to the contracting 

states in which protection for an invention is desired.

Elected Office The national office or intergovernmental organization of, or acting for, the 

contracting state that the applicant elects under chapter II of the Patent 

Cooperation Treaty.

Election An indication that the applicant makes, in the demand for an international 

application filed under the Patent Cooperation Treaty, as to the contracting 

states in which the applicant intends to use the results of the international 

preliminary examination.
Glossary

Page 113 GAO-02-789 Foreign Patent Challenges

European Patent 

Convention

A convention, concerning the granting of European patent protection, 

signed in Munich in 1973 within the scope of the European Economic 

Community. The aim of the convention is to make the protection of 

inventions in the member states easier, cheaper, and more reliable by 

creating a single European procedure for the grant of a patent on the basis 

of a uniform body of substantive patent law.

European Patent Office 

(EPO)

EPO, founded in 1977 under the European Patent Convention, issues 

“European patents” that are valid in the 24 European member states (as of 

June 1, 2002) on the basis of a single application and an examination 

procedure using uniform standards.

Examination A process in which a patent examiner will review a patent application, 

correspond with applicants, and decide whether inventions deserve 

patents based on claims.

Filing Date Date sent on a “filing receipt” from the U.S. Patent and Trademark Office 

(USPTO). The date is usually 1 to 4 days after the patent application is 

mailed to USPTO. The date starts the period within which a patent 

application must be filed in other countries to receive patent protection. 

The date also closes the 1-year period during which an inventor can 

publicly use, work, describe, or place the invention on sale in the United 

States without the anticipation rule being applied to bar a patent on the 

invention. Any developments that occur after this date will not be 

considered as prior art that would preclude the granting of a patent. 

Filing Fees Fees that an inventor pays to the designated or elected office for filing a 

patent application. 

First-to-File System A system whereby a patent is awarded to the first inventor to file a patent 

application. This system is used by every country in the world except the 

United States.
Glossary

Page 114 GAO-02-789 Foreign Patent Challenges

First-to-Invent System A system whereby a patent is awarded to the inventor who files a patent 

application and establishes the earliest invention date. The United States is 

the only country in the world that uses this system.

Grace Period A fixed period of time immediately preceding the filing of a patent 

application during which certain disclosures of the invention to the public 

are permitted without prejudicing the patentability of the invention.

Grant A grant occurs when a designated or elected office issues a patent on an 

invention. The office sometimes charges a fee for a grant.

Independent Claim A claim that by itself describes an aspect of an invention without reference 

to any other claim.

International Preliminary 

Examination

An examination governed by chapter II of the Patent Cooperation Treaty in 

which a preliminary and nonbinding opinion is given about whether the 

claimed invention appears to be novel, to involve an inventive step 

(nonobvious), and to be industrially applicable. 

International Preliminary 

Examination Authority 

Experienced patent offices appointed to carry out international searches 

and the international preliminary examination. These offices include patent 

offices in Australia, Austria, China, Japan, Russia, South Korea, Sweden, 

the United States, and the European Patent Office. 

International Searching 

Authority (ISA)

National office or intergovernmental organization that carries out the 

international search. The tasks of ISA include establishing documentary 

search reports on prior art with respect to inventions that are the subject of 

patent applications. The Assembly of the Union of the Patent Cooperation 

Treaty appoints the International Searching Authorities. 
Glossary

Page 115 GAO-02-789 Foreign Patent Challenges

International Search Report A report that an International Searching Authority produces that lists 

citations of published documents that might affect the patentability of the 

invention claimed in an international patent application. 

Issue Fee A fee that the national patent office charges after approving a patent. 

Maintenance Fees Fees that inventors pay to patent offices in order to keep an issued patent 

in effect. Fees are generally required annually from the 3rd year to the 20th 

year of the patent term. 

Multiple Claims Multiple claims are sometimes included in patent applications because 

inventors are seeking protection for different aspects and/or uses of the 

same invention or for closely related inventions. 

National Stage (National 

Phase)

The second of the two main phases of the Patent Cooperation Treaty 

procedure. The national stage consists of the processing of the 

international application before each office of, or acting for, a contracting 

state that the inventor designated in the international application. 

Office Action A notification from a patent office regarding an examiner’s decision on a 

patent application. The office action states reasons for any adverse 

decision, objection, or requirement and provides information that may 

assist the applicant in judging whether to pursue the patent application. 

Paris Convention Also known as the Convention for the Protection of Industrial Property, the 

1883 Paris Convention is a treaty adhered to by 163 countries that give 

limited recognition to one another's patent application filing dates. For 1 

year after the date of filing of a U.S. patent application, essentially the same 

patent application may be filed as a "foreign counterpart" application in any 

or all other countries that subscribe to the convention. Any foreign 

counterpart application that is filed in this way will be treated in the foreign 

country in question as though it had been filed on the U.S. priority date and 

not on the actual date of filing in the foreign country in question. 
Glossary

Page 116 GAO-02-789 Foreign Patent Challenges

Patent The grant of a property right that a national government or an international 

intergovernmental authority issues for an invention, giving the inventor the 

right to exclude others from commercially making, using, or selling the 

invention during the patent term. Inventions that patents cover typically 

include products as well as processes for making or using new or existing 

products. 

Patent Agent A nonattorney with technical training who is legally permitted to draft, file, 

and prosecute patent applications on behalf of inventors. 

Patent Cooperation Treaty 

(PCT)

PCT came into force on January 24, 1978, and presently has 115 countries 

as adherents, including the United States. The treaty facilitates the filing of 

applications for patents on the same invention in member countries by 

providing, among other things, for centralized filing procedures and a 

standardized application format. The World Intellectual Property 

Organization in Geneva, Switzerland, administers PCT.

Patent Harmonization A multilateral effort to standardize patent procedures. 

Patent Pendency Patent pendency is the amount of time it takes for a patent to be issued or 

the patent application to be finally rejected.

Patent Term The duration of the patent protection. 

PCT Chapter I The first, mandatory phase under the Patent Cooperation Treaty that 

includes performance of an international search, issuance of an 

international search report, and publication of the patent application and 

search report by the international bureau of the World Intellectual Property 

Organization.
Glossary

Page 117 GAO-02-789 Foreign Patent Challenges

PCT Chapter II The second, optional phase under the Patent Cooperation Treaty that 

includes examination of the international application and issuance of an 

international preliminary examination report. 

Prior Art The body of information, including patent and nonpatent literature, that is 

consulted to determine the patentability of an invention.

Prosecution The full scope of procedures that must be followed to actually obtain the 

patent. 

Receiving Office The national patent office or intergovernmental organization where the 

inventor files the international application of the Patent Cooperation Treaty 

and pays the international stage filing fees. 

Scope of Patent Protection The scope of patent protection outlines the boundaries of the invention for 

which the inventor is seeking exclusive rights.

Search A search of previous and existing patents and other documents that might 

describe the conceived invention. Searches are carried out to discover 

whether the invention is novel and nonobvious over the prior art to qualify 

for a patent. 

Search Fee A fee that a patent office or intergovernmental organization charges to 

conduct a search of previous and existing patents. 

Translation Fees Fees that patent applicants incur to translate a patent application into the 

language of the designated country. 

Transmittal Fee A fee that a patent office charges for the patent application to be sent or 

conveyed to the patent office by means of a transmittal letter required in 

the patent application.
Glossary

Page 118 GAO-02-789 Foreign Patent Challenges

U.S. Patent and Trademark 

Office (USPTO)

An administrative branch of the U.S. Department of Commerce, USPTO is 

charged with overseeing and implementing the federal laws on patents and 

trademarks. The agency is responsible for examining, issuing, classifying, 

and maintaining records of all patents issued in the United States. USPTO 

also serves as the filing agency for Patent Cooperation Treaty applications. 

World Intellectual Property 

Organization (WIPO)

An intergovernmental organization of the United Nations system, WIPO is 

responsible for promoting the protection of intellectual property 

throughout the world and for administering various multilateral treaties 

dealing with the legal and administrative aspects of intellectual property.

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