Posted by Jeff Sweetman on Mon, Aug 31, 2009 @ 09:13 AM
Rule 2 of 7
Before selecting countries, do your homework on the competitive landscape, market opportunities and IP system that each potential jurisdiction offers.
For consumer goods, first cover existing markets (typically including your home country if not already covered). For many products, that will mean the USA and Europe, possibly followed by secondary markets like Canada or Australia.
The so-called "BRICK" countries (Brazil, Russia, India, China and Korea) have large and growing populations. The growth of the middle class in India and China alone makes them worthy of consideration. Even if the current market for your product isn't huge, a patent lasts 20 years, and that's a long time given the rate of demographic change in those countries.
Markets where distribution or licensing opportunities are likely should be next on your agenda. You might, for example, have contacts in certain countries that might lead to licensing opportunities over time. Certainly it is preferable to pursue such countries before considering those in which you have no contacts and little prospect of making any.
Manufacturing jurisdictions can then be considered. The reason for considering them less important (in relative terms) is that it's often relatively easy for potential competitors to avoid protection in a given country by having a product manufactured in another country where there's no patent protection.
For a relatively simple consumer product, it may be impractical to cover all jurisdictions where the product could theoretically be manufactured.
There is also the issue of detection: is it going to be easy - or even possible - in a particular jurisdiction to determine where goods are being made? Is the enforcement system effective and not too costly? There's no point having a patent if it's impractical to use it against an infringer due to the local legal system not being up to the task!
Of course, there are some technologies where it may be practical and desirable to get patent coverage in manufacturing jurisdictions. An example is certain types of integrated circuit that can only be fabricated in a limited number of fabrication plants, most of which are located in a small number of Asian countries. In that case, it may be practical and commercially useful to obtain patent protection in all those countries.
Of course, if your technology is not consumer-related, you should cover whichever jurisdictions make the most sense to your business. Suitable jurisdictions for mining roof bolts may be distinctly different to those for a pharmaceutical composition!
Photo credit:
cuppojoe
Posted by Jeff Sweetman on Fri, Aug 28, 2009 @ 11:10 AM
Rule 1 of 7
As the convention priority year comes to a close, decisions need to be made about the invention that is the subject of the priority filing. Is there sufficient commercial interest (or advantage) to justify the costs of continuing with the patent process? If so, in how many countries is patent protection to be pursued - and in which one?
In some cases it might make sense to just maintain protection locally, or perhaps to add only one or two other major countries.
However, if broader foreign filings is required- or if you're not sure and you want to keep your options open! - a Patent Cooperation Treaty (PCT) application can help you maximize the number of countries in which your rights are kept alive.
Filing a PCT application effectively delays the most significant costs associated with foreign filings by at least 18 months. This critical additional period may allow you to develop a clearer commercial picture before you need commit to the substantial costs of foreign filings by entering the national phase.
The International Search Report can also give an indication (albeit with no guarantees!) of the sort of prior art that might be faced during national examination.
The total cost of using the PCT may be slightly higher, because the initial filing fees are relatively high. However, all costs associated with individual national filings are deferred.
The ability to keep your options open for so much longer will in many cases more than outweigh the cost difference.
Photo credit:
canolais
Posted by Jeff Sweetman on Fri, Aug 28, 2009 @ 10:35 AM
Many of the patent owners, their IP departments and patent attorneys we speak to are under budget pressure. This is especially the case in the essential - but relatively high cost - area of international patent protection.
A recession might last a year or two, but patents last for twenty years. It's therefore a delicate balancing act to reduce costs whilst maintaining a pipeline of patent rights that will avoid leaving an IP hole in years to come.
We have come up with seven great tips for controlling your foreign patent filing costs that are drawn from industry best practice, shouldn't compromise your IP strategy and will put a smile on your face - and that of your boss, partner or CFO!
One thing though: before implementing any of these strategies, talk to your patent attorney. They are experts and should have a sense of whether any of the following suggestions might have a negative impact on your business and intellectual property aims.
See the next blog post for our first "rule".