IP services you
can rely on

The international patent filing process increases the administrative tasks for IP teams who already have limited time, resources, and bandwidth. Finding efficiency gains is critical for team members managing foreign filing.

As the global patent portfolio expands, email volume goes up, filing data grows, and managing deadlines becomes increasingly difficult.

Once a company researches, evaluates, and decides on a course of action, it must act on those decisions. Filing a single patent manually could involve sending 10-15 emails back and forth with your agents. And that's even before you begin docketing the information into your IP management software.

With an integrated foreign filing solution, your team no longer needs to spend countless hours on routine tasks. Your team can save time in managing email communications, entering filing data, searching for filing records, and uploading documents.

Table 1. Place foreign filing orders in bulk on the AQX platform

With one click in AQXŽ, you can place an order with filing instructions for up to 500 records in less than 10 minutes.

AQX automatically links the foreign filing instructions to all associated documents, claims, and search history. It stores each type of document in individual folders. Smart form technology helps avoid redundancy. What's more, AQX also automatically dockets your filing data and documents such as translations, official receipts, and applications.

Automated foreign filing streamlines the initial application process, saving time and eliminating clinical errors from manual entry. In addition, your IP team gets full transparency, live tracking, and automated processes throughout the foreign filing lifecycle.

Monitor Your Global Patent Portfolio

When your foreign filing data is maintained outside of your IP management software, making foreign filing decisions can be challenging. An integrated IP management platform containing all your patent filing data empowers business and IP leaders to collaborate better. They can now easily make decisions on budgeting and filing that strengthen the portfolio.

In AQX Home, the main dashboard on our IP management platform, you can visualize the international patent filing process end-to-end. Your IP team can monitor the portfolio in real-time and manage everything from upcoming foreign filing spend to annuity payments.

In short, all the tools and information needed are interconnected and available to your entire team. So, your team can manage the patent portfolio effectively and make informed foreign filing decisions easily.

Table 2. View status in each case or on the AQX Homepage

Mini Client Case Study: Putting It All Together

"One of our clients (a multinational manufacturing company) wanted to optimize the use of resources in the R&D and patent prosecution. The R&D group guides the patent filing strategy since they know the technologies that are most important to the company. They maintain a policy to always file for coverage of their most valuable patents in 15 key countries.

Anaqua collaborates with this client to pre-set the details related to filing in those 15 countries. The AQX IP management platform pre-populates information for these countries, streamlining routine filings for the most important technologies. As a result, the innovation team is freed up to focus time and energy on new innovations. In addition, the patent prosecution team can focus on decisions to protect, strengthen, and streamline the overall IP portfolio."

The Result - Foreign Filing Made Easy.

The AQXĹ˝ IP management platform is a comprehensive solution to manage global patent portfolios and foreign filings efficiently. Ultimately, this leads to a greater impact on global business. By taking a strategic and selective foreign filing approach, organizations can effectively protect their important IP assets in key markets. The AQX IP management platform helps achieve this while improving efficiency and reducing costs.

Contact Us Today for a Demo

Additional content you may like in this series:

• Gain Competitive Advantage: Benchmark Foreign Patent Filings with AQX
• Generate Foreign Filing Costs and Budget Effectively in AQX

Guiding Principles for Effective Foreign Filing

The main objective of any business is to grow - and growing globally is often a critical aspect of that strategy. To support growth, filing in key markets across the globe for patent protection can help ensure the invention is protected, defend against a competitor, gain exclusive market share for a product, or generate revenue through licensing.

Companies often embark on foreign patent filing without having done the proper due diligence and planning. Corporations need an iterative, cost-effective approach to remain competitive in their requisite markets. This article discusses five key areas to consider in developing a foreign patent filing strategy.

• Determine where to file
• Know the competition and market
• Control IP costs and manage time
• Keep an eye on the changing international landscape
• Optimize international patent filing processes

1. Determine Where to File

First, determine if foreign patent protection aligns with your overall business plan. Understanding your company's expansion strategy, and the products that would be sold through that expansion is critical when determining a filing strategy. Knowing where the product will be sold and not sold, who the competitors are in those markets, and the short, mid, and long-term plans are just some of the factors that must be considered. With this information in hand, the IP department can devise a plan.

Blanketing the entire world in patent coverage isn't practical or cost-effective. Consider filing in the major revenue-opportunity markets for the company's primary industries. By identifying jurisdictions with high concentrations of valuable patents in technologies in your industry, the patent will likely be worth filing in that location.

For example: acquiring protection throughout all of Europe isn't useful if you don't plan to operate throughout all of Europe. There is a strategic decision to make regarding the market and whether you are leaving revenue at risk - and whether it would be detrimental if that market was lost to a competitor.

Take the time needed to perform a thorough review of your current approach and filing objectives. A better understanding of these goals can help shape the strategy for the coming quarter, year, and longer-term goals.

2. Know The Competition and Market - Identify Their Position and Strategy

Obtaining a clear view of the competition's IP position in each relevant jurisdiction significantly impacts a filing strategy. It also aids in determining if it makes sense to move into or continue in a specific jurisdiction.

There should be a deliberate balance of quality patent protection and sufficient space for growth when assessing in which jurisdictions to focus your company's international filing efforts. The density of patents for a particular technology due to a high level of competition in a jurisdiction, as well as potential enforcement proceedings, may also indicate a lack of room for growth. Therefore, the density of patents should be considered before deciding to file a foreign filing patent.

A calculated foreign filing strategy can force a competitor to produce their product somewhere with higher costs or lower technological manufacturing capabilities. Therefore, protection in a low-cost manufacturing jurisdiction may have value beyond maximizing revenue. Key questions to ask:

• Is your focus on protecting your business, preventing competition from encroachment, and enforcing your IP rights?
• What is your competition doing in a particular jurisdiction?
• Do you have the means to enforce your rights if needed?

3. Control IP Costs and Manage Time

Efficiency and affordability are key to an international filing strategy due to prosecution time and expense implications. Pursuing international patent protection can be an expensive endeavor, but it also requires managing many new deadlines by your IP team. Although it may not require drafting a new application if it is based on a corresponding U.S. application and filed within 1 year, the overall filing and prosecution can become quite expensive over time.

Certain jurisdictions require translations into their languages, payment of fees in their currencies, and working with local agents in their jurisdictions. It's not just about managing fees - but also managing time. Acquiring patent protection in some jurisdictions can take 48 to 84 months after an initial U.S. filing. The key questions here are:

• How much time does your IP team spend tracking deadlines with local agents?
• What transparency do leaders in your organization have into the foreign filing budget?
• How can you pace your spending when it comes to secondary foreign filings?

For each patent, considering the path to obtaining protection is critical. Leveraging vehicles such as the Patent Cooperation Treaty (PCT), European Patent (EP), and the upcoming Unitary Patent (UP) can help pace your cash flow and better manage timelines. For more than a few countries the Patent Cooperation Treaty (PCT) covers most of the world and enables you to defer the major filing costs for up to 18 months.

4. Keep an Eye on the Changing International Landscape

The fast-changing intellectual property landscape can be challenging for organizations to navigate. These are just three examples - and there are many - of why it is critical to keep an eye on the changing IP environment.

• The Unitary Patent will enable IP teams - for the first time - to obtain a single patent in the EU (European Union) and is set to start in June 2023. Initially, pursuing the Unitary Patent may seem a simple decision, but there could be many pros and cons to consider.
• In the face of global economic uncertainty, companies may look to cut costs or start pruning their innovation portfolios without proactively putting in place approaches and plans that ensure resilience. One approach could involve looking at ways to create greater collaboration or processes to speed up decision-making around your filing strategies.
• For Artificial Intelligence (AI) inventions, there are different laws and regulations and still no global standard. The EU has developed the EU AI Act which could over time become a worldwide standard. This is another area to watch to ensure your organization is ready.

It's important to be prepared to adjust your strategy as the latest information becomes available about laws and regulations that will impact foreign patent filing. Additionally, be prepared that as your company moves into new jurisdictions, or expands filing in current jurisdictions, the workload naturally becomes more complex with additional prosecution deadlines and maintenance decisions.

5. Optimize Internal Patent Filing Processes

When you consider what goes into whether to file outside your home country, the process often starts when the business does a periodic review of the IP portfolio. The amount of time and tasks that IP teams spend on foreign filing activities after the portfolio review and decisions have been made should not be underestimated.

Paralegals, the docketing team, and your IP administration can spend multiple hours every day managing agent relationships, managing communications and documentation, tracking down orders, and trying to meet upcoming filing deadlines. Obtaining an estimate for just one case may require numerous emails back and forth with an agent and then assembling this information to share with other team members.

• What standardized processes or automated workflows does your organization have in place to manage the workload?
• Is your team prepared to handle an increase in the administrative tasks associated with foreign filings?
• Do you anticipate having more resources to manage foreign filings in the upcoming year?

Assessing internal work processes and looking for areas where these processes can be streamlined are key to addressing this issue. Maintaining focus on improving operational processes can have many benefits such as improved efficiency and productivity, and better visibility into workflow processes.

Key Takeaways

Making decisions to file patents in multiple countries can be a complex process, as it should be closely aligned with your company's growth strategy. Ultimately, developing a foreign patent filing strategy requires a thorough analysis of the selected markets, associated costs, the competition's position, the probability of success in obtaining a patent grant, and, most importantly, the value derived from the patents secured. In summary, a few key takeaways are:

1. Maintain a working knowledge of your company's IP portfolio to make smart filing decisions upfront.
2. Keep a clear view of your competitive IP position in each relevant jurisdiction.
3. Assess goals and budgetary requirements associated with foreign filing activity in a particular market.
4. Adapt the foreign patent filing strategy based on the ever-changing IP landscape.
5. Optimize internal foreign filing procedures by reviewing current tools and processes.

Watch this Video to Learn How Anaqua Can Help.

Written by: Anders Osa-Svanberg, Senior Director, Head of Foreign Filing at Anaqua

Maintaining the integrity of your IP assets is one of the most critical responsibilities for any IP professional. Yet, the sheer volume of administrative tasks, especially around annuities, can be overwhelming. A missed annuity payment or trademark renewal doesn't just mean a lapse in protection; it can disrupt product sales and lead to substantial financial consequences. As IP portfolios grow and data becomes more complex, ensuring that rights remain active and enforceable becomes increasingly challenging. 

This is precisely where Anaqua's integrated IP Payment solutions deliver transformative value. 

Anaqua's Differentiated Approach: Integration That Drives Impact

The seamless integration of portfolio access, analytics, and execution is what sets Anaqua apart. It eliminates silos, enables effective collaboration across the organization, reduces manual effort, and enables smarter, faster decisions. Here are some of the key features and benefits of Anaqua's patent annuities and trademark renewals services:

• Portfolio Access: View your entire IP portfolio in one centralized location. With direct access to your portfolio, your organization can mitigate risks, simplify decision making, streamline your payment process, and manage your IP portfolio.
• Integrated Analytics: Gain actionable insights at the decision point. The Annuities Decision Report (ADR), included in our annuity services, consolidates all publicly available data to help you evaluate key metrics for each patent. This empowers clients to make informed decisions regarding annuities, licensing, and overall business impact.

The report includes comprehensive data and visualizations that rate and rank your patents covering metrics such as patent score, family citations, rejection history, claims analyzer insights, and landscape views. When managing patent annuities, the key challenge is determining which patents are worth maintaining and which may no longer justify the cost. The AI Patent Summaries in the ADR help address this by providing fast, in-depth analysis of each patent's claims from multiple strategic angles:

• Exemplary Use Cases: These illustrate how a patent might be applied in real-world scenarios, helping you assess its commercial relevance and potential for licensing or enforcement.
• Claim Element Breakdowns: By deconstructing each claim into its core components, you gain a clearer understanding of the patent's technical scope and how it aligns with your current or future product roadmap.
• Assessments of Claim Breadth and Quality: These evaluations help you gauge how defensible and valuable a patent is. Broader, higher-quality claims often indicate stronger protection and greater strategic importance, making them more likely to justify continued annuity payments.

Together, these AI-driven insights enable more confident, data-backed decisions about which patents to maintain, monetize, or let lapse, while optimizing your IP portfolio for both cost efficiency and strategic value.

• In-Platform Execution: Anaqua's AQX IP Management platform offers our clients an Annuities Decision Workspace, enabling users to initiate renewals directly within the software with a single click. This allows clients to streamline the entire decision-making process.

All critical information such as internal data points, visibility to license agreements, active conflicts, and external analytics like the ADR report are surfaced on one screen, eliminating the need to toggle between systems. This unified view empowers users to assess the full 20-year lifecycle cost of a patent family, analyze claim quality and breadth, and understand commercial relevance through AI-generated summaries and more.

By consolidating data, insights, and execution into a single interface, users can make faster, more informed annuity decisions with greater confidence and efficiency.

And once a decision is made, the action (whether it's renewing, letting lapse, or transferring) is initiated directly within Anaqua's IPMS platform. No exporting, and no third-party tools needed. Just one intelligent, integrated workflow.

Anaqua client Michael Leathes, Head of IP, said, "Anaqua enabled us to push our lapse rate way over 60% and cut costs over 40% in four years. And, most critical of all, really be in full command of our intellectual asset base."

Secure Your Organization's IP Assets with Confidence 

Despite the clear advantages, some clients hesitate to make the change due to fear of disrupting existing workflows, uncertainty about the learning curve, or misunderstanding the full capabilities of the Anaqua IPMS platform.

However, IP leaders like Fan Zhiyong, Deputy Director of IPR, understood that change needed to be made:

"We realized our in-house systems couldn't sustain our growth. Anaqua delivered the automation and tools we needed to actively manage our portfolio."

Anaqua has a strong track record of helping IP organizations eliminate risk, reduce costs, and maximize IP value. With over 1.2 million payments processed worldwide, Anaqua has built a reputation for reliability, precision, and client-centric service.

"Anaqua helped us implement common best practices across the entire company", said Bruno Labadens d'Arc, Head of IP.

Secure Your Organization's IP Assets with Confidence

Anaqua's Patent Annuity and Trademark Renewal Services is one of the most trusted solutions in the industry. Backed by an ISO 9001 certified process, Anaqua delivers consistent quality and reliability in managing annuity and renewal payments for corporate IP teams. For law firms using Anaqua's IP Payments service, this service will be highly valued by their clients. Anaqua empowers you to make informed decisions, reduce risk by never missing a deadline, and gain full visibility into payment history for smarter budgeting and forecasting, knowing exactly what the fees are upfront.

With Anaqua, protecting your IP is not just easier; it's smarter. Unlock the full power of Anaqua's platform and let renewals drive strategic value for your organization.

Conclusion: The Advantages of An Integrated Approach to IP Management

There are clear advantages to taking an integrated approach to managing the IP lifecycle. With Anaqua's IPMS platform, IP teams can proactively manage their IP portfolios with confidence and clarity while experiencing the following benefits: 

• Efficiency: Reduce time spent on manual tracking and coordination
• Risk Reduction: Fewer missed deadlines and errors 
• Strategic Clarity: Align renewals with business goals and IP strategy
• Cost Savings: Some clients have saved up to 30% on their firm's patent annuity and trademark renewal costs

Contact us to get a quote