Procedures, Pitfalls and Costs: Best Practices for Securing Foreign Patents

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Knobbe Martens' Partners Bil Bunker and Brenden Gingrich presented "Procedures, Pitfalls and Costs: Best Practices for Securing Foreign Patents " at the IP Impact 2012 seminar in McLean, Virginia on Wednesday, May 30, 2012. The seminar was designed for corporate counsel, C-Level executives, venture capitalists, entrepreneurs, IP managers and licensing executives.

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Procedures, Pitfalls and Costs: Best Practices for Securing Foreign Patents

  1. 1. Procedures, Pitfalls and Costs: Panel: Bill Bunker and Brenden Gingrich Best Practices for Securing Moderator: Rose Thiessen Foreign PatentsThe recipient may only view this work. No other right or license is granted.
  2. 2. Foreign Patent Filing Strategies • What? • Where? • When? • Why? • How Much $$$?© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 2
  3. 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© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 3
  4. 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© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 4
  5. 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?© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 5
  6. 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 • If so, you might consider requesting that the United States application not be published until its issuance© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 6
  7. 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.© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 7 7
  8. 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© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 8
  9. 9. Countries • European Patent Office (EPO) • Japan • China • Argentina; Brazil; Chile; Mexico • Russia • India • Canada • Australia© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 9
  10. 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)© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 10
  11. 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© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 11
  12. 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)© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 12
  13. 13. Possible Subject Matter Exclusions • Naturally occurring substances • Methods of surgery, therapy and diagnosis • Animal and Plant Varieties • Computer Programs© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 13
  14. 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© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 14
  15. 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© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 15
  16. 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© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 16
  17. 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© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 17
  18. 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© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 18
  19. 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© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 19
  20. 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© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 20
  21. 21. Questions? knobbe.com©2012 Knobbe, Martens, Olson & all rights reserved.©2012 Knobbe Martens, Olson & Bear, LLPBear, LLP all rights reserved. 21
  22. 22. Rose Thiessen Rose.Thiessen@knobbe.com 858.707.4213

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