More Related Content Similar to Procedures, Pitfalls and Costs: Best Practices for Securing Foreign Patents (20) More from Knobbe Martens - Intellectual Property Law (20) Procedures, Pitfalls and Costs: Best Practices for Securing Foreign Patents1. Procedures, Pitfalls and Costs:
Panel: Bill Bunker and Brenden Gingrich
Best Practices for Securing
Moderator: Rose Thiessen
Foreign Patents
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2. Foreign Patent Filing Strategies
• What?
• Where?
• When?
• Why?
• How Much $$$?
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3. Should I Foreign File?
• Case-by-case review
• Nature of each case determines patentability
• How patentability is assessed varies by country
• Perceived value/effort relationship may determine
whether to proceed
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4. Reasons to Consider Filing in Foreign Countries
• Stop your competitors from supplying the foreign market
(supply yourself or through a foreign partner)
• License IP rights to a foreign company
• Attract investment from a foreign partner or the foreign
government
• Increase the value of your IP portfolio
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5. Consider Your Markets
• Are you planning to provide products or services to
the foreign market either directly or through a
distributor?
• Are you looking for a collaborative partnership with a
foreign company to provide products or services to
the foreign market?
• Are you seeking investment in the foreign country?
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6. Consider Your Markets
• Markets outside the United States
– Can you tolerate a foreign competitor supplying
unprotected markets?
• United States Market
– Are you satisfied with patent protection only in the
United States?
• If so, you might consider requesting that the
United States application not be published until
its issuance
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7. Foreign Filing Timeline and Expenses
Conception Patent Patent Cooperation National Phase
Of Invention Search Treaty (PCT) Filing (Foreign Patent
App. Filings)
18 months
1 year
Provisional Non-Provisional
Patent App. Patent App.
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8. Consider Your Budget
• Plan realistically
– Obtaining a patent in some foreign jurisdictions can
be expensive
• Official fees paid to the foreign government
• Professional fees paid to a foreign patent
attorney
• Cost of translating all documents submitted to
the foreign patent office
• Cost of annuities after patent issues
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9. Countries
• European Patent Office (EPO)
• Japan
• China
• Argentina; Brazil; Chile; Mexico
• Russia
• India
• Canada
• Australia
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10. Cost Considerations
• Serial filings generally not preferred in Europe
(time limits for filing divisionals, high costs
associated with validation of granted EP patent)
• Filing in U.S., Europe, and Japan will cover bulk of
the global market
• Carefully consider whether to file in other countries
(Canada, Australia, Korea, Taiwan, China, Russia, or
other markets)
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11. Cut Losses When Appropriate
• Annual review of portfolio to identify
applications/patents to abandon, donate, monetize,
license
– Change business direction
– Introduction of new products
– Old products off the market
– Unfavorable prosecution
– Litigation
– Possibilities for enforcing patent against
competitor, value of patent/application to
discourage competition
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12. Patentable Subject Matter
• Draft specifications that encompass all categories of
patentable subject matter
– Compositions of matter
– Apparatus
– Systems
– Components
– Methods of making (compositions, apparatus)
– Methods of using (compositions, apparatus)
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13. Possible Subject Matter Exclusions
• Naturally occurring substances
• Methods of surgery, therapy and diagnosis
• Animal and Plant Varieties
• Computer Programs
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14. Dealing with Excluded Subject Matter
• If your technology falls into an excluded area, see an
experienced patent attorney
– There are often ways to obtain patent protection for
excluded subject matter through clever drafting of
the specification and claims
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15. Direct National Phase Filing
• File first application in a foreign country
– Fastest way to an issued patent
– You will likely need to obtain a foreign filing license
from your country of residence before filing
– The application may need to be submitted in a
foreign language
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16. Paris Convention Filing
• Many countries are a party to the Paris Convention
– A foreign patent application can claim priority to
the first-filed patent application disclosing the
invention
• The first-filed application must have been filed in
a country that is a party to the Paris Convention
• The foreign application must be filed within one
year of the first-filed application that discloses
the invention
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17. PCT Filing
• Many countries are PCT member nations
– A PCT application designating a foreign country
provides the most flexibility in the timing of filing
the national application
– Can delay the cost of national phase entry for up to
30 months
– Can enter national phase early if time is of the
essence
– Keep the number of claims reasonable if planning
on entering the national phase, as claim fees may
be based on the number of claims originally
presented in the international application
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18. Aggressive Filing Strategy
• File utility applications directly in all countries of
interest
• Take advantage of accelerated examination
procedures
• Consider parallel filings within a particular country
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19. Defer Costs / Delay Filing Decisions
• File U.S. provisional application, then
• File U.S. utility application only or
• File PCT application designating all states
• Consider serial filing strategy
• Consider mechanisms for delay of grant
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20. When must I decide whether to foreign file?
• Review/decision at same time as evaluation for US filing,
and reevaluate at later stages (e.g., due date for entry
into national stage from PCT, receipt of negative
examination report)
• File US first to establish priority, or simultaneously with
foreign filings?
• Different drafting requirements for foreign filings
• Foreign bar dates and grace periods
• Delay examination of foreign application?
• Take advantage of Patent Prosecution Highway (PPH) or
expedited examination provisions
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21. Questions?
knobbe.com
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