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.
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.
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:
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:
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.
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.
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.
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.
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.
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:
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