Learn the basics of filing your patent abroad (i.e. outside the United States). Do you have a patent? Do you want to make sure it's protected outside the U.S.? Foreign filing can be a confusing process, but it doesn't have to be. Learn some of the basics and get started today.

1. Learn the Basics:
of Foreign Filing
Don't be afriad

2. The United States
makes up only 23% of
the world's economy.
Foreign Filing
Why?
1 2 3 4
23% 75%
Each country is
separate. A patent is
only valid within that
country
Several strategic filings
can cover 75% of the
world’s GDP.
There are other big,
valuable markets.
Leverage them.
Domestic Validity Strategic Value

3. Timeline
Foreign
Filing
Approaches
Month 1 Month 12 Month 30/31
Initial
Application
PCT
Application
European
Patent
Applications
Applications
in Other
Countries

4. Consider Where It's Valuable
Where to File?
“Make, use
or sell” in
that market
Market size &
profitability
De facto
cross-border
protection
Location of
competitors
Enforceability
Interest of
potential
licensees &/or
acquirers

5. Translations
Initial local agent fees
Local agent fees
for prosecution
Government fees
Annuity fees
Typical Costs
Office actions
Filing
Examination
Publications
Search
Grant

6. Be ready in advance
of month 12 or 30.
Translations
Assignments
Foreign associates
Remember...
take advantage
of deferrals when
available!

7. This is a key cost driver.
PAY
ATTENTION
to the
organization
of how you
answer office
actions.

8. Total Cost
vs. Quality
Quality
Cost
Number of people reviewing office actions.
Diminishing return on quality as you
add more people to review office actions.

9. Find a Balance
Quality Cost
Certain claims
(not any claims)
Granted
(if possible)
In a chosen
country
For a reasonable
price
EVERYTHING ELSE IS NONESSENTIAL!

10. #1
CLEAR THE TITLE EARLYForeign Filing
Best Practices
The application needs to be
properly in the name of the
applicant, not the inventor(s),
before national phase.
You should get the assignments
prior to the first filing.

11. #2
PLAN AHEADForeign Filing
Best Practices
Start early to avoid last minute
panics and ensure quality
throughout the process.

12. #3
FOCUSForeign Filing
Best Practices
Focus on the key
claims and proceed
with the application
in a timely manner.

13. You can increase patent
portfolio value with the
right strategy.
Remember to first examine the why,
where, and when to file; balance the
quality vs. cost; and follow best
practices.

14. www.dennemeyer.com
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