International patent filing, without the complexity

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.

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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 AQX®, 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 AQX® 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.

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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

Frequently, organizations try to expand into new markets to increase revenue streams and their global presence. But they need to protect that expansion by filing as many international patent applications as possible. The downside of this approach is: an increased administrative burden on IP teams and a ballooning IP budget. Without the right foreign filings solution to manage an international patent portfolio, filing abroad can become costly and time-consuming.

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The Power of an Integrated IP Management Platform

An integrated IP management platform helps IP and business teams take a strategic and selective approach to foreign filing. With the right tools, your patent portfolio can support business goals and ensure strong protection in key markets.

The Challenge

Global patent filing increases the administrative tasks for IP teams already challenged with limited time, resources, and bandwidth. Email volume continues to increase, filing data grows, and managing deadlines becomes more difficult as a global patent portfolio expands. Finding efficiency gains is critical for team members managing foreign filings.

Companies look for IP management solutions to manage their foreign filing more effectively. These solutions must support the diverse needs of all stakeholders and align the IP portfolio with broader business goals. IP team members who manage daily foreign filing tasks need tools to streamline their processes. At the same time, decision-makers need big-picture information to drive portfolio strategy.

The Solution

What if you could streamline routine foreign filing processes, connect with trusted law firms worldwide, and gain strategic insights? Imagine achieving all of this while improving efficiency and reducing costs.

On the AQX® IP Management Platform, you can navigate the complexities of global IP protection with one fully integration solution.

• Leverage Analytics to Determine Patents and Markets that Need Global Protection: AQX® allows you to strategically choose which important patents need protection in your key markets.
• Generate Foreign Filing Cost Estimates and Budget Quickly: With AQX®, you can generate cost estimates for foreign filing, allowing you to budget effectively and avoid unnecessary expenses.
• Automate Foreign Filing Processes & Monitoring Progress: Integrated foreign filing solution helps you save time in managing email communications, searching for filings, and uploading documents.

Only with Anaqua can you have a powerful IP management platform with an integrated Foreign Filings Service. Partnering with Anaqua gives you visibility into your foreign filing data to drive successful IP management. With an integrated solution, you can manage your IP team's workload and access better intelligence to make filing decisions. In addition, this improves operational efficiency by freeing up time to focus on other IP work. All the while knowing your IP portfolio is in expert hands with the best possible protection around the globe.

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