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

Procedures, Pitfalls and Costs:
Panel: Bill Bunker and Brenden Gingrich
Best Practices for Securing
Moderator: Rose Thiessen
Foreign Patents

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Foreign Patent Filing Strategies

• What?
• Where?
• When?
• Why?
• How Much $$$?

© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 2

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


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


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?


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United States application not be published until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


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.

7

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


Countries

• European Patent Office (EPO)
• Japan
• China
• Argentina; Brazil; Chile; Mexico
• Russia
• India
• Canada
• Australia


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)


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


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)


Possible Subject Matter Exclusions
• Naturally occurring substances
• Methods of surgery, therapy and diagnosis
• Animal and Plant Varieties
• Computer Programs


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


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


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


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

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


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


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

Rose Thiessen Rose.Thiessen@knobbe.com
858.707.4213

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